The Complainant is Landmann Wire Rope Products, Inc. of Burlingame, California, United States of America (“U.S.”) represented by Law Offices of Charles L. Thoeming/Bielen, Lampe & Thoeming, P.A., U.S.
The Respondent is Elite Sales, Inc. of Miami, Florida, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 8, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 December 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 16, 2012. 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
On October 31, 2011, the Complainant filed U.S. Trademark Application No. 85/460,798 for the mark LANDMANN in connection with “Wire ropes; wire rope used for lifting and rigging; wire rope sling; steel wire rope; wire rope fittings of metal, namely, swaged, impact swaged, and compacted; chain block used for lifting and rigging; chain hoist used for lifting and rigging; metal rigging chain; metal shackles and hooks for lifting; metal hardware, namely, swivels, eye bolts, eye nuts, chain, binder chains, quick links, snap links, swage sleeves, double-end swivels, wire rope clips, thimbles, anchor shackles, chain shackles, master links, pear links, round rings and hoist hooks; metal turnbuckles” in International Class 6, “Load binders; truck winches; ratchet assemblies; winch bars” in International Class 7, “Hand tools, namely, wire rope cutters and swaggers” in International Class 8, and “Cargo control tie down straps, winch straps” in International Class 22. The application claims that the mark was first used in commerce at least as early as December 31, 1986.
The Domain Name was registered on July 15, 2011. 5. Parties’ Contentions A. Complainant
The Complainant is a wholesale distributor of steel wire rope, rigging hardware, chain, cargo control and fastening materials. The Complainant has used the LANDMANN mark since at least as early as December 31, 1986. The Complainant has established itself as a market leader for wholesale distribution of steel wire rope, rigging hardware, chain, cargo control and fastening materials on the West Coast of North America with outlets in Southern California, Northern California, the Pacific Northwest, Nebraska and Louisiana. The Complainant has invested significant financial resources to raise awareness of the LANDMANN mark in connection with its goods. The LANDMANN mark has appeared in rigging and wire rope trade brochures and other written materials published by the Complainant for a wide audience. The Complainant submits that it has established common law trademark rights in the LANDMANN mark, and that the mark has acquired distinctiveness. Since as early as May of 1998, the Complainant has owned and operated the registered domain name in conjunction with its steel wire rope, rigging hardware, chain, cargo control and fastening materials.
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s LANDMANN trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Complainant states that the Respondent has no relationship with the Complainant, and is attempting to confuse visitors to the site that is hosted on the Domain Name. The site has a heading that reads “Landmann Wire Rope Products” and uses the Complainant’s copyrighted images. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns common law rights in the mark LANDMANN. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs a slight spelling variation of the Complainant’s trademark, “landman,” with the less distinctive term “wire,” is confusingly similar to the Complainant’s LANDMANN trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that diverts traffic to the site by misrepresenting a connection with the Complainant, and the Respondent has not denied the allegation. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,
Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name many years after the Complainant began using the LANDMANN mark. The Respondent’s web site uses the Complainant’s name in the heading at the top of the page and uses the Complainant’s copyrighted images. This demonstrates that the Respondent was aware of the Complainant’s rights when the Respondent registered and used the Domain Name. There is no question, in this Panel’s view, that the Respondent’s use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent’s site by creating a likelihood of confusion with the Complainant’s trademark. 7. Decision
For 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.
Michelle Brownlee
Sole Panelist
Dated: January 27, 2012
Full & Egal Universal Law Academy