The Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America (“US”), represented by Andrew Stentiford, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is A Domain Privacy of Beaumaris, Victoria, Australia / Ready Asset, Nish Patel of Xiamen, China. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2014, the Registrar 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 September 3, 2014, 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 September 5, 2014.
The Center verified that the Complaint together with the amendment 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 September 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2014.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 8, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant, Stanley Black & Decker, Inc., is a diversified global provider of hand tools, power tools and related accessories, mechanical access solutions and electronic security solutions, engineering fastening systems and infrastructure solutions. The Complainant was formed from the merger in 2010 of two companies, the Stanley Works and Black & Decker Inc., both over a hundred years old. In 2013, the Complainant’s global revenue was USD 11 billion and the market capitalization USD 5.48 billion. Stanley Black & decker Inc. employs 48,830 persons and operates in more than 175 countries.
The Complainant is the owner, either directly or through fully wholly owned subsidiaries, of an extensive trademark portfolio protecting both STANLEY and BLACK & DECKER, including:
- STANLEY in notched rectangle, a Community trademark, registration number 001020015 of October 13, 2000;
- BLACK & DECKER, a Community trademark, registration numbers 001239201, 004343083 and 004453239, with registration dates of July 11, 2000, June 18, 2006 and May 24, 2006, respectively;
- BLACK & DECKER, a US trademark, registration numbers 517,319, 535,933 and 2,228,812, the latter registered on March 2, 1999.
The Complainant is the registrant of the domain name .
The disputed domain name was registered on March 25, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant contends the disputed domain name is confusingly similar to the Complainant’s trademarks because both the STANLEY and the BLACK & DECKER portions of the disputed domain name are identical to the Complainant’s trademarks and only differ from them by the absence of the symbol “&” which cannot be included in a domain name. Domain names which only differ from a trademark by minor variations have a greater tendency to be confusingly similar (Bang & Olufsen a/s v Unasi Inc.,WIPO Case No. D2005-0728). Moreover, a domain name comprising two well-known registered trademarks has been found to be confusingly similar (Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433; Société des Produits Nestle SA v. Stuart Cook, WIPO Case No. D2002-0118). The Complainant therefore submits that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Complainant further contends that the Respondent has no affiliation with the Complainant who has not authorized, licensed or otherwise permitted use of either the trademarks used in the disputed domain name. The Respondent has therefore no rights or legitimate interests in the disputed domain name. The Respondent has not made a bona fide offering of goods or services because the Respondent has solely sought to take advantage of the Complainant’s well-known trademarks by diverting Internet users to the Respondent’s website. Indeed, the Respondent’s website is a pay-per-click parking page which generates links to sellers of tools of the Complainant’s customers and distributors as well as links to competitor products. It is generally accepted that the pay-per-click links do not themselves confer rights or legitimate interests arising from bona fide offering of goods or services (Intel Corporation v. Ox90, WIPO Case No. D2002-0010). Moreover, the Respondent has not been commonly known by the disputed domain name. The Respondent was without doubt aware of the existence of the Complainant’s trademarks when it registered the disputed domain name. The Respondent is therefore simply taking unfair advantage of the Complainant’s trademarks and is using its pay-per-click website to divert Internet traffic to paid links and other associated products. Finally, the Respondent is not making noncommercial use out of the disputed domain name under the Policy because the pay-per-click links to advertisers are clearly commercial in their intent and effect.
Last, the Complainant contends the Respondent registered and is using the disputed domain name in bad faith because the Respondent’s website is a pay-per-click parking website whose purpose is clearly to attract users for profit based on confusing the Respondent’s disputed domain name with the Complainant’s trademarks and domain name. The Complainant further submits that the bad faith is exacerbated by the fact that its trademarks are widely promoted, well-known and famous and that the Respondent clearly knew of the Complainant’s trademarks when registering the disputed domain name. Bad faith has been found to exist where there can be no question that the Respondent knew or should have known about the Complainant’s trademarks before registering its domain name (Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051; Nike Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). The fact that the beneficial owner has taken steps to hide its identity via a privacy shield is prima facie evidence of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
For all these reasons, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in the STANLEY and BLACK & DECKER marks. Under the UDRP, the test for identity or confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be identical or confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the identity of confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen,WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain name incorporates the Complainant’s marks STANLEY and BLACK & DECKER marks in their entirety and are clearly its dominant element. The absence of the word “and” in the disputed domain name does not alleviate any confusion.
Given the distinctive nature of the STANLEY and BLACK & DECKER marks which are readily recognisable within the disputed domain name, the Panel is satisfied that the disputed domain name is identical to the Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production on this element shifts to the Respondent. The burden of proof, however, remains with the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Aktiebolaget Electrolux v. Ngoc Tien Nguyen,WIPO Case No. D2012-2318; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty / 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name, given the Respondent uses the disputed domain name in association with a parking page with sponsored links utilizing the Complainant’s marks but has no known rights in the marks.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230; Comerica Bank v. Rodica Ilea,WIPO Case No. D2013-1861; Gabrielle Studio, Inc., The Donna Karan Company LLC v. djis sdi,WIPO Case No. D2012-1704; Amegy Bank National Association v. Whois Privacy Services Pty/ 21562719 Ont Ltd,WIPO Case No. D2012-1129 and references therein).
In this case, the disputed domain name differs from the Complainant’s marks by the sole absence of the word “and” and the Complainant has thus and otherwise proved that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant’s trademarks, and has intentionally diverted Internet users to a website offering sponsored links promoting, inter alia, the same or similar products as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent’s conduct can have.
The Panel therefore considers that the Respondent’s conduct in this case constitutes evident bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) 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 the Complainant.
Michel N. Bertschy
Sole Panelist
Date: October 9, 2014
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