WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Joda Enterprises, Inc. v. Whois Privacy Services Pty Ltd/ Azeras LLC Case No. D2010-0655 1. The Parties
The Complainant is Joda Enterprises, Inc. of Chicago, United States of America, represented internally.
The Respondent is Whois Privacy Services Pty Ltd of Brisbane, Australia; Azeras LLC of Charlestown, Saint Kitts, the Federation of Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2010. On April 27, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On April 28, 2010, F transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 4, 5 and 6, 2010. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on June 17, 2010. 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.
On June 29, 2010, Administrative Panel Procedural Order No. 1 was issued seeking clarification in respect of which parties had used the Trademark LINK starting on September 1994, and then clarify in what capacity Link Tools International (USA) Inc. has used the Trademark LINK since 1997. On June 29, 2010, the Complainant responded in filing a Third Targeted Amendment to the Complaint. 4. Factual Background
The Trademark LINK was registered on November 4, 1997 by Roberts Tool International (USA), Inc. in association with wrenches, universal drives in the nature of torque transmitting universal joints or their power equivalents, socket wrenches and extension bars (herein “the Trademark” or the “LINK Trademark”). The registration certificate 2,111,455 indicates that the registration was applied for on July 14, 1993 and that the date of first use was September 1994. Since that date, Robert Tool International (USA), Inc. used the Trademark in association with this class of power tools until November 5, 1998, when Roberts Tool International (USA), Inc. assigned the rights in the said Trademark to Joda Enterprises, Inc.
The Complainant, Joda Enterprises, Inc. was set up on October 31, 1997. It is the sole shareholder of Link Tools International (USA), Inc. (herein “Link Tools Int.”). The Complainant and Link Tools Int. have been using the Trademark since November 1998 and have substantially advertised and promoted it in having spent several millions of dollars in respect of the LINK Trademark.
The disputed domain name was registered on June 23, 2000 and was recently renewed to expire in 2011.
The Complainant and Link Tools Int. have never licensed nor authorized the Respondent to use the Trademark or any other trademark of Link Tools Int. nor to register the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant represents that it is the sole shareholder of its fully owned subsidiary Link Tools International (USA), Inc. which, since its foundation, has developed, promoted and sold cutting edge and power tools capable of various tool combinations of tools functions as a one piece custom-made tool. According to the Complainant, Link Tools Int. has invested extensive time and millions of dollars in promoting and advertising the Trademark LINK which was applied for on July 14, 1993, registered on November 4, 1997 by Roberts Tool International (USA), Inc. and subsequently assigned to the Complainant on November 5, 1998.
The Complainant further represents that pursuant to its extensive use and promotion, substantial goodwill and consumer recognition became associated with the Trademark.
The Complainant submits that the disputed domain name consisting of the Trademark LINK combined with the generic term “tools” and gTLD “.com” is confusingly similar to the Trademark and relies on two decisions; see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006.
The Complainant further states that the Respondent is not affiliated with Link Tools Int. and that the Respondent was never licensed nor authorized to use the Trademark or to register the disputed domain name. By reason of said lack of authorization, according to the Complainant, the Respondent cannot have legitimate interests in the Trademark or the disputed domain name. See Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti,WIPO Case No. D2001-1158.
The Complainant contends that the Respondent is not using or preparing to use the disputed domain name with a bona fide offering of goods and services since the disputed domain name contains only links to other websites which promote and offer for sale the precise categories of goods associated with the Complainant's Trademark. See QVC, Inc. and ER Marks, Inc. v. A,WIPO Case No. D2005-1303 and Yahoo! Inc. v. Syrynx, Inc and Hugh Hamilton.,WIPO Case No. D2000-1675. Therefore, according to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant alleges that the Respondent has used and still willfully uses the disputed domain name in a misleading way to attract potential Internet consumers looking for LINK tools or products and divert them to other websites promoting competitive products. Furthermore, according to the Complainant, in partnership with the Respondent, the registrant contributes to hiding the owner's identity, particularly in this case, where the Respondent is attempting to benefit from the reputation and Trademark of the Complainant and takes away its rightful business which type of activity has been strongly criticized in earlier decisions. See Société BIC v. LaPorte Holdings, LLC,WIPO Case No. D2005-0342 and Clad Holdings Corporation v. Kentech, Inc., a.k.a. Spiral Matrix a.k.a. Titan Net,WIPO Case No. D2006-0837.
According to the Complainant, the bad faith conduct of the Respondent under paragraph 4(b)(iv) of the Policy resides in the Respondent using the disputed domain name for commercial gain by luring consumers seeking products of Link Tools Int. under the Trademark to the Respondent's website and from there being redirected to websites generating “clickthrough” commissions from the owners of those websites. See Hunter's Specialities, Inc. v. Hong Kong Names LLC,WIPO Case No. D2006-1250.
Finally, the Complainant represents that further evidence of bad faith by the Respondent's registration and use of the disputed domain name resides in the exact concordance of the products under the Trademark and those of competitors present in the websites associated thereto by links, this, being in itself evidence of the Respondent's awareness of the Complainant's Trademark and that the Respondent registered the disputed domain name in bad faith. See TAG HEUER v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2005-0133 and Garys & Company Newport Beach, Inc. v. David Webb,WIPO Case No. D2005-0892.
The Complainant concludes that the Respondent, in failing to respond to its efforts to resolve the dispute, provides further evidence of its bad faith. See Deutsche Telekom AG v. Pimptel Inc.,WIPO Case No. D2005-0928. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Trademark was registered by Robert Tool International (USA), Inc. on November 4, 1997, pursuant to a first use in September 1994. The Trademark was assigned to the Complainant on November 5, 1998. The Trademark was used at the outset by the original registrant and thereafter by the Complainant and its wholly owned subsidiary Link Tools International (USA), Inc. since October 31, 1997.
While the Complainant in its Third Targeted Amendment did not clarify in what capacity Link Tools Int. had used the Trademark since October 3, 1997, it reiterated that as owner of the registered Trademark since November 5, 1998, it and its subsidiary had continuously, without interruption, used the Trademark in association with the manufacturer and sale of generations of LINK tools.
This Panel has no doubt nor reservation that the use of the Trademark by Link Tools Int. was under the express authorization of its parent company, the Complainant in the present case, and that this use was most likely under an implied license from the registered owner of the Trademark. It is not necessary in this type of proceeding to require additional details or evidence as to royalty payment or other terms in respect of the relationship between the owner and user of the Trademark in the present circumstances of the case. The Panel finds that the Complainant has rights in the Trademark which, by its extensive use and promotion, benefits of considerable goodwill.
The disputed domain name incorporates the LINK Trademark to which is combined the generic descriptive term “tools”, which, by no coincidence in this Panel's opinion, is the term to describe the general class of products in respect of which the Trademark is registered. A final addition is the gTLD “.com”. As held in earlier decisions cited by the Complainant, Magnum Piering Inc., supra and Champagne Landson, supra, which the Panel adopts herein, the fact that “a domain name wholly incorporates a registered trademark” notwithstanding the addition of the suffix gTLD “.com” is sufficient to establish confusing similarity for the purposes of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the LINK Trademark in which the Complainant has rights.
The first criterion has been met. B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as amended, as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant's Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant's Trademark or the domain name.
The evidence has not been contradicted by the Respondent and clearly represents that there is no affiliation of the Respondent with Link Tools Int. and that the Respondent was never licensed nor authorized by the Complainant or Link Tools Int. to use the LINK Trademark or to register the disputed domain name. As stated by the panel in Calvin Klein Trademark Trust “nothing in the record suggests any legitimate interest of [r]espondent in the [d]omain [n]ame”. Furthermore, the evidence shows that the Respondent is not using or preparing to use the disputed domain name with a bona fide offering of goods and services, to the contrary, the said domain name appears to contain several links to other websites including some which may be considered to be third party products competitive with those of the Complainant and Link Tools Int. are offered.
Such use of the disputed domain name which may even constitute an infringement of the Complainant's Trademark cannot on the record before the Panel be use of the disputed domain name with a bona fide offering of goods or services.
The Panel adopts the findings in the two earlier cases rely upon by the Complainant, QVC, Inc. and ER Marks Inc. and Yahoo Inc., supra, and finds that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
The second criterion has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The registered Trademark was used and promoted extensively since 1994. Link Tools Int., along with the Complainant, has invested considerable sums of money in addition to time in promoting and advertising the LINK Trademark. As it appears from the website of the Complainant, in particular segments produced as Annex 5 to the Complaint, the products or tools marketed and sold by the Complainant and its wholly owned subsidiary, Link Tools Int., have been the subject of numerous tests, usages and positive comments by different parties as reported in several different magazines. Even when the disputed domain name was registered in 2000, the Trademark already had significant goodwill associated therewith.
The disputed domain name consists of the Trademark LINK to which is added the generic term “tools” which describes the general class of products in association with which the Trademark is registered and used. This cannot be mere happenstance. It is inconceivable to this Panel that the Respondent was not aware of the existence of this considerably used Trademark and the products, namely tools associated therewith. The Panel finds that under the present evidence, including the absence of authorization by the Complainant to the Respondent in incorporating the Trademark in the disputed domain name and registering same, that the said disputed domain name was registered in bad faith. This bad faith is further confirmed by the practice of the Respondent in hiding its identity with the assistance of the domain name registrant.
The evidence is clear that the Respondent is using the disputed domain name, confusingly similar to the Trademark to attract Internet visitors to its website where are provided links to many other websites offering competing products, namely tools, in competition to those of the Complainant and thus gain financial remuneration. Different panels in the UDRP cases cited by the Complainant have in similar circumstances held that the domain name was used in bad faith. See Société BIC, supra; Clad Holdings Corporation, supra; Hunter's Specialty Inc., supra; TAG HEUER, supra and Garys & Company Newport Beach, Inc., supra.
The Panel, with the support of these earlier decisions which he adopts, finds that the Respondent has used the disputed domain name in bad faith.
The third criterion has been met. 7. Decision
The Panel concludes that:
(a) the disputed domain name is confusingly similar to the Complainant's Trademark;
(b) the Respondent has no rights or legitimate interest in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: July 8, 2010
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