WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BendPak, Inc. v. Tool Gopher
Case No. D2008-0825
1. The Parties
Complainant is BendPak, Inc., of Santa Paula, California, United States of America, represented by Wennergren Law Offices, Ventura, California, United States of America.
Respondent is Tool Gopher, of Murrieta, California, of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 2, 2008. On May 28, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On May 28, 2008, GoD transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact information, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2008.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 3, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is incorporated in the United States of America under the name “Bend-Pak, Inc.” Complainant owns a United States federal trademark registration for the mark BEND-PAK, which was registered in 1995.
According to the Complaint, Respondent registered the disputed domain name in 2006. The disputed domain name is currently “parked” with the registrar.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant owns a United States federal trademark registration for the mark BEND-PAK for machinery, namely pipe bending machines and automobile lifts. Except for a hyphen, which appears in Complainant’s mark but not in the disputed domain name, the domain name is identical to Complainant’s mark and corporate name.
Respondent has no rights or legitimate interests in respect of the domain name.
There is no evidence that Respondent has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Respondent has not been commonly known by the domain name.
Respondent is not making any legitimate non-commercial or fair use of the domain name.
The domain name was registered and is being used in bad faith.
Complainant asserts the belief that the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to one of its competitors, for valuable consideration in excess of Respondent’s out-of-pocket costs. Complainant rests its belief on its assertion that Respondent has refused to transfer the domain name to Complainant even though Respondent has no legitimate interests in the domain name.
Complainant also asserts that that Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to Complainant’s mark; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements as to the disputed domain name. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the mark BEND-PAK by virtue of its federal registration in the United States of America for the mark.
Complainant has also established that the disputed domain name is identical or confusingly similar to its mark. Excluding the top-level domain and the omission of the hyphen, neither of which are relevant for these purposes, the disputed domain name consists of Complainant’s mark.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that while the Complainant’s evidence is thin1, it has made a prima facie showing as to the examples set out in Paragraph 4(c)(i)-(iii) of the Policy.
As an initial matter, while the Complaint does not expressly indicate that Complainant has not authorized Respondent’s use of the domain name, the Panel finds that fairly implied.
It does not appear that Respondent could make or prepare to make a legitimate use of the name “bendpak” in light of Complainant’s 1995 U.S. federal registration for the mark BEND-PAK. See Policy, paragraph 4(c)(i). It does not appear, from the “WhoIs” printout, that the disputed domain is Respondent’s name. See Policy, paragraph 4(c)(ii). Moreover, Respondent’s name is “Tool Gopher,” neither that name nor the name of the individual identified as the administrative and technical contact for the registration resemble the BEND-PAK mark or the domain name.
Apart from the Complainant’s statement that “Respondent caused the domain to be ‘parked’ … with GoD,” and the conclusory assertion that “Respondent is not making any legitimate non-commercial or fair use of the domain name,” Complainant has provided no actual evidence regarding how Respondent actually uses the domain name. The Panel visited the site associated with the disputed domain name to obtain information about the use of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5 (panel may conduct limited factual research in to matters of public record, including visiting the web site associated with the disputed domain name). The site bears the legend “This page is parked free, courtesy of GoD” and contains links to numerous third party sites, all of which appear to relate to weight loss and none of which appear to relate to pipe bending machines or automobile lifts or to tools, equipment, or machinery of any kind. Under the circumstances presented here, solely for purposes of evaluating Complainant’s prima facie case, the Panel finds that this use of the domain name as a parking website is not a bona fide non-commercial use. See Policy, paragraph 4(c)(iii).
The Panel draws adverse inferences from Respondent’s failure to respond to the Complaint. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
As to the third element, Complainant makes two arguments:
Complainant’s first argument is that it believes the domain was registered for the purpose of selling it to Complainant for consideration in excess of Respondent’s out-of-pocket costs, see Policy, paragraph 4(b)(i). Complainant further asserts:
This belief is based in part on Respondent’s refusal to transfer the domain name to Complainant even though Respondent has no legitimate interest in the domain name.
Based on the record before it, the Panel cannot conclude that the refusal to transfer a domain name – without more – establishes a respondent’s intention, at the time of registration, to sell the domain name at all, much less, to sell the domain name for more than the respondent’s out-of-pocket costs. Elsewhere in the Complaint, Complainant alludes to its demand that Respondent transfer the domain name to it, but no other details that might support a finding of bad faith are provided.
Complainant’s second argument is that it believes Respondent is using the domain name to intentionally try to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
Complainant provides no facts and makes no argument to support this argument assertion. As previously noted, apart from a copy of “WhoIs” search results, Complainant provides no evidence regarding Respondent’s use of the domain name or the website associated with the domain name. The Panel’s review of the website reveals that, while it contains links to numerous third party sites, none appear to relate to pipe bending machines or automobile lifts or to tools, equipment, or machinery of any kind.
Nonetheless, the Panel is mindful that Complainant’s rights in the BEND-PAK mark predate Respondent’s registration and use of the domain name. Further, Complainant’s BEND-PAK mark does not appear to be comprised of an ordinary word, making it less likely that the registration was simply fortuitous.
As a consequence of those facts, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that it is unlikely that Respondent registered the domain name – to which it had no legitimate claim - without intending to benefit from it. The identity or similarity of the domain name and the BEND-PAK mark is sufficient to establish an intention to attract Internet users due to confusion with Complainant’s mark. The presence of the third party links – which presumably generate revenue, for Respondent or GoD, establish use of the domain name for commercial gain.
Under these circumstances, along with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the domain named in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Debra J. Stanek
Sole Panelist
Dated: July 17, 2008
1 Complainant’s only evidence relating to Respondent’s registration and use of the domain name consists of a copy of “whois” search results for . The Complaint, signed and certified by Complainant’s counsel, contains other factual assertions, including an allusion to correspondence between the parties (i.e., a reference to a demand by Complainant that Respondent transfer the domain name). However, unsupported statements of a party’s representative as to factual matters easily established by documentary evidence (particularly those that are not within the representative’s personal knowledge) are not evidence and carry little or no weight.
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