Complainant is Dynabrade, Inc. of Clarence, New York, United States of America (“US”), represented by Simpson & Simpson PLLC, US.
Respondent is One Source Supply Co. of Aurora, Illinois, US. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2014. On February 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 17, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2014.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 13, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
Complainant has used the DYNABRADE mark for abrasives, powered and hand operated abrasive tools and accessories since at least July 12, 1984, almost thirty years ago. Complainant is the owner of three US federal registrations for the DYNABRADE mark, the earliest of which was registered on July 21, 1987. Complainant also owns registrations for the DYNABRADE mark in 18 other countries and the European Union. On May 19, 1997, Complainant registered , which it uses to advertise and to communicate with prospective customers.
Respondent registered the disputed domain name on October 1, 2010. The domain name reverts to a landing page that displays links to third-party websites.
Respondent is a distributor for Complainant. Complainant’s US Industrial Distributor Policy paragraph 8 entitled “Use of Dynabrade Trademark” states that “Distributor shall never use any Dynabrade, Inc. Trade name or any trade name similar thereto as part of distributor’s internet domain name.” The said policy became effective on January 1, 2009, prior to Respondent’s registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the DYNABRADE trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s DYNABRADE mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the common word “repair.” Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As set forth above, Complainant has shown that it has rights in the DYNABRADE mark. It owns over twenty trademark registrations, including three US federal registrations. It has used the DYNABRADE mark since at least July 12, 1984, and received its first US registration on July 21, 1987.
The disputed domain name is confusingly similar to Complainant’s DYNABRADE mark. It contains Complainant’s DYNABRADE mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “repair”. Numerous WIPOUDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from Complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the DYNABRADE mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has exclusive rights in the DYNBRADE mark. Though Respondent is one of Complainant’s distributors, Complainant has not authorized Respondent to register and use the disputed domain name. Respondent has not used the domain name for any bona fide offering of goods or services, and the Respondent is not known by the domain name. Furthermore, Respondent’s registration of the disputed domain name directly violates paragraph 8 of Complainant’s US Industrial Distributor Policy Statement, which became effective on January 1, 2009, by which Respondent is legally bound.
Respondent is in default and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As one of Complainant’s distributors, Respondent actually knew of Complainant’s DYNBRADE mark prior to registration of the disputed domain name. Respondent’s registration of the disputed domain name directly violates paragraph 8 of Complainant’s US Industrial Distributor Policy Statement, which became effective on January 1, 2009, by which Respondent is legally bound.
The disputed domain name reverts to a landing page that displays links to third-party websites. Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods and services. It has long been held that this type of click through revenue violates the Policy. See, e.g., express scripts, Inc. V. Windgather investments ltd. / mr. Cartwright,WIPO Case No. D2007-0267.
The Panel finds that Respondent registered and has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy. 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 disputed domain name, , be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: March 24, 2014
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