The Black & Decker Corporation v. Azra Khan
Claim Number: FA0212000137223
Complainant is The Black & Decker Corporation, Towson, MD, USA (“Complainant”) represented by William G. Pecau, of Pennie & Edmonds LLP. Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdewalt.com>, registered with Dotregistrar.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 19, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.
On December 22, 2002, Dotregistrar confirmed by e-mail to the Forum that the domain name <wwwdewalt.com> is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 15, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwdewalt.com> domain name is confusingly similar to Complainant’s DEWALT mark.
2. Respondent does not have any rights or legitimate interests in the <wwwdewalt.com> domain name.
3. Respondent registered and used the <wwwdewalt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns a registered trademark for the DEWALT mark with the United States Patent and Trademark Office (Reg. No. 621,152). Complainant has used the DEWALT mark to designate its home improvement and hardware products since 1923. Complainant manufactures power tools and accessories, hardware and home improvement products, and technology-based fastening systems used in and around the home and for commercial applications.
Complainant’s products and services are marketed in over 100 countries, and it has manufacturing operations in more than 14 countries. In addition, the DEWALT mark is protected under numerous trademark registrations worldwide.
Goods sold under the DEWALT mark represent over a billion dollars in sales per year for Complainant. The longstanding use of the DEWALT mark and the success of related craftsman products have resulted in a recognition of quality goods associated with the DEWALT mark within the hardware and home improvement industry.
Complainant also uses the DEWALT mark as an address for its website, <dewalt.com>. Complainant’s website is used to advertise, promote, market, and sell its DEWALT products to its existing and prospective customers. Complainant has operated this website since February of 1998.
Respondent registered the domain name on January 13, 2002. Respondent uses the subject domain name to divert Internet traffic to a search engine webpage. Complainant notes that Respondent has been a party in prior UDRP disputes, where Respondent was found to have misappropriated trademarks such as BANK OF AMERICA and FAMILY CIRCLE for use in a domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has demonstrated its rights in the DEWALT mark through proof of trademark registration with the United States Patent and Trademark Office as well and commercial use of the mark for 80 years.
Respondent’s <wwwdewalt.com> domain name is confusingly similar to Complainant’s DEWALT mark since it incorporates Complainant’s entire mark. The addition of “www,” the abbreviation for World Wide Web, fails to distinguish the domain name from Complainant’s DEWALT mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to challenge the Complaint and the Panel is therefore permitted to accept all of Complainant’s allegations as true, unless clearly contradicted by the evidence. In addition, the Panel will draw all reasonable inferences in Complainant’s favor. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Complainant has alleged that Respondent has no rights or legitimate interests in the <wwwdewalt.com> domain name as a part of its prima facie Complaint. From Respondent’s lack of appearance, the Panel infers that Respondent has no such rights or legitimate interests in the <wwwdewalt.com> domain name. Once Complainant has made the proper allegations the burden shifts to Respondent to come forward and articulate its rights or legitimate interests. Respondent has failed to satisfy its burden leaving the Panel to accept Complainant’s contentions. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent uses the <wwwdewalt.com> domain name to divert Internet traffic to a search engine webpage. Respondent presumably profits from the misdirected use of the <wwwdewalt.com> domain name, and has demonstrated no legitimate connection with the DEWALT mark. Respondent’s commercial use of the <wwwdewalt.com> domain name, which takes advantage of a typographical error, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent is identified as Azra Khan on its WHOIS information page and Complainant has provided evidence that Respondent has been a losing party in prior UDRP disputes. There is no evidence on the record demonstrating that Respondent is commonly known by the <wwwdewalt.com> domain name. The character of the second level domain itself suggests that Respondent could not be commonly known by it, because it incorporates Complainant’s distinctive DEWALT mark along with the common abbreviation contained in a web-address “www.” Therefore, the Panel finds that Respondent has no rights or legitimate interests in the subject domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <wwwdewalt.com> domain name and that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was on notice of Complainant’s exclusive rights in the DEWALT mark given Complainant’s registration of the mark in 1956 and its 80 years of continuous use in commerce. The character of the <wwwdewalt.com> domain name makes it evident that Respondent registered the domain name with knowledge of Complainant’s interests in the DEWALT mark. Respondent’s subsequent registration of the domain name, despite knowledge of Complainant’s rights, evidences an attempt to trade off Complainant’s DEWALT trademark and its associated goodwill, and thus constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).
Respondent’s <wwwdewalt.com> domain name reflects a common typosquatting technique, in that the subject domain name contains the “www” (World Wide Web) portion of a web-address prior to the DEWALT mark with the omission of the period in between the two. Since most Internet users type “www” and then a period prior to the second level domain (commonly an entity’s trademark), Respondent is engaging in a practice to ensnare those individuals who forget to type the period after the “www” portion of the web-address and diverting them to a search engine webpage for its monetary benefit. Hence, Respondent’s use of the <wwwdewalt.com> domain name in connection with a search engine is likely to confuse Internet users, who have made the error reflected in Respondent’s domain name, searching for Complainant. Therefore, Respondent’s use of the <wwwdewalt.com> domain name represents bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has thus been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwdewalt.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 3, 2003
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