The Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America, represented internally.
The Respondent is wuzhenlong, Shenzhen Rico Electronics Co. of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2014. On September 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 11, 2014, 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. On September 19, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 22, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 28, 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 2010 merger of The Stanley Works Inc. (established in 1843) and Black & Decker Inc. (established in 1910). The Complainant is a Fortune 500 company and a global provider of hand tools, power tools and related accessories, mechanical access solutions and electronic security solutions, engineering fastening systems and infrastructure solutions. Products of the Complainant are sold under brands including DeWalt, Bostitch, Stanley FatMax, Dustbuster, Workmate and Facom.
In 2013, the Complainant achieved a revenue of USD 11 billion worldwide, USD 5.48 billion of which was derived from the construction and DIY division of the business selling power tools, hand tools, storage, and accessories. The Complainant has 48,830 employees worldwide and operates in over 175 countries. In May 2014, the Complainant became an "Official FC Barcelona Global Partner". The brand Stanley became the "Official and Exclusive Tools and Security Partner of FC Barcelona" while the brand Black & Decker became an "Official Partner of FC Barcelona".
The Complainant owns over 1,900 registrations for trademarks incorporating the word "stanley" in 157 countries. The earliest STANLEY trademark registration dates back over 100 years. The Complainant is also the proprietor of over 900 registered trademarks incorporating the word "black & decker" in 144 countries. Some of these trademark registrations are listed below:
Jurisdiction
Trademark
Trademark No.
Registration Date
Community Trade Mark
STANLEY
010106722
December 8, 2011
United States
STANLEY
3881737
November 23, 2010
China
STANLEY
938230
January 28, 1997
China
STANLEY
679511
February 28, 1994
Community Trade Mark
BLACK & DECKER
004453239
May 24, 2006
United States
BLACK & DECKER
517319
November 8, 1949
United States
BLACK & DECKER
2228812
March 2, 1999
China
BLACK & DECKER
1976164
April 14, 2003
The Complainant operates its corporate website under the domain name .
Not much is known about the Respondent beyond the WhoIs record of the Disputed Domain Name. The Disputed Domain Name was registered on April 23, 2012. Around the time of the Complaint, the Disputed Domain Name did not resolve to any website.
On August 22, 2014, the Complainant sent a cease and desist letter to the Respondent's email address as reflected on the WhoIs record. That email failed to deliver and the Complainant did not receive a reply. 5. Parties' Contentions A. Complainant
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the trademarks STANLEY and BLACK & DECKER. The Disputed Domain Name is a combination of two well-known trademarks. It commences with "stanley" which is identical to the Complainant's trademark STANLEY, and finishes with "black decker", which differs from the Complainant's trademark BLACK & DECKER only by the ampersand symbol "&". The omission of the ampersand symbol from the Disputed Domain Name is a minor variation;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no affiliation with the Complainant and the Complainant has not authorized, licensed or otherwise permitted use of either of the trademarks used in the Disputed Domain Name. The Respondent has not made a bona fide offering of goods or services. The Respondent is not commonly known by the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has registered the Disputed Domain Name to take unfair advantage of the goodwill associated with the Complainant's well-known trademarks STANLEY and BLACK & DECKER. It is inconceivable that the Respondent did not know of the Complainant's trademarks during registration. Passive holding of a domain name is prima facie evidence of bad faith. The Respondent has made no effort to distinguish the Complainant's trademarks. The Respondent failed to respond to the Complainant's cease and desist letter. The Respondent's address on the Shenzhen company register is different from that found in the WhoIs record of the Disputed Domain Name. The Respondent's failure to provide correct contact information or to update their address is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
As the language of the registration agreement is Chinese, the default language of the proceeding should be Chinese. The Complainant has requested for the Panel to exercise its discretion to adopt English as the language of the proceeding pursuant to paragraph 11(a) of the Rules. Having considered the circumstances summarized below, the Panel determines that English shall be adopted as the language of the proceeding:
(a) The Respondent has chosen not to participate in the proceedings by failing to file a response;
(b) The Respondent has not objected to the Complainant's request for English to be the language of the proceeding;
(c) The Complaint has already been filed in English and requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant in view of the Respondent's non-participation in the proceeding; and
(d) Requiring a Chinese translation of the Complaint will unnecessarily delay the proceeding. 6.2 Discussion
The Complainant has the burden of showing that the Respondent has failed to meet the requirements of paragraph 4(a) of the Policy. Paragraph 4(a) lays down the requirements as follows:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant's rights in the trademarks STANLEY and BLACK & DECKER are well supported in the evidence. The Panel notes that the Complainant's name and operating domain name are essentially the concatenation of both trademarks, that is, STANLEY BLACK & DECKER. There is no question that the Disputed Domain Name incorporates the trademarks STANLEY and BLACK & DECKER (minus the ampersand "&") in their entirety. The Panel accepts the Complainant's submission that the omission of the ampersand of the trademark BLACK & DECKER in the Disputed Domain Name is a minor variation of the trademark and does not serve to distinguish the Disputed Domain Name.
There are no further relevant elements in the Disputed Domain Name which are able to distinguish the Disputed Domain Name from the Complainant's trademarks. In the circumstances, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant's trademarks STANLEY and BLACK & DECKER. The first limb of paragraph 4(a) of the Policy is therefore established in this case. B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent is not affiliated with the Complainant. The Complainant has also confirmed that the Respondent is not authorized, licensed or otherwise permitted by the Complainant to use the Complainant's trademarks in the Disputed Domain Name. There is no evidence before the Panel to suggest that the Respondent has made use of the Disputed Domain Name for a bona fide offering of goods or services, or at all. The Respondent's name bears no resemblance to the Disputed Domain Name and there is nothing in the evidence that indicates that the Respondent is otherwise commonly known by the Disputed Domain Name. In the absence of any response, the Panel draws the conclusion that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name as prescribed in the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Based on the evidence submitted, the Panel is satisfied that the trademarks STANLEY and BLACK & DECKER are well known. The selective combination of the trademarks in the Disputed Domain Name by the Respondent could only have arisen from an awareness of and familiarity with these trademarks. The Panel agrees with the Complainant that it is inconceivable that the Respondent, who has no right or legitimate interest in the words "Stanley" and/or "Black & Decker", selected the Disputed Domain Name as a matter of pure coincidence. The Respondent's refusal and/or failure to offer any denial as such is a strong indication that the Respondent is unable to do so.
The form of bad faith registration and use under the Policy founded upon passive holding has been established for many years by UDRP panels. First developed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, passive holding has since been recognized by many UDRP panels as a sui generis category of bad faith outside those expressly outlined in paragraph 4(b) of the Policy. Having regard to the following factors present in the circumstances, the Panel finds that the third limb of paragraph 4(a) of the Policy is established in the passive holding of the Disputed Domain Name by the Respondent:
(1) The Complainant's trademarks STANLEY and BLACK & DECKER are well known;
(2) The Respondent did not respond to the Complaint;
(3) The Respondent has actively concealed his identity by ineffective contact particulars as evidenced in the WhoIs record of the Disputed Domain Name;
(4) It is not possible to conceive of any plausible legitimate use of the Disputed Domain Name by the Respondent and there is nothing in the evidence which could indicate that the Disputed Domain Name was registered and used in good faith; and
(5) The Respondent failed to respond to the Complainant's cease and desist letter. 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.
Soh Kar Liang
Sole Panelist
Date: November 24, 2014
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