The Complainant is Black & Decker, Inc. of Towson, Maryland, United States of America ("United States"), internally represented.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2015. On April 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2015, 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 18, 2015.
The Center verified that the Complaint together with the amended 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 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2015.
The Center appointed Leon Trakman as the sole panelist in this matter on June 24, 2015. 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 provides evidence that over a number of years until the present it has registered various trademarks internationally, including at least five trademarks in the United States (of which one was registered on November 8, 1949), a Company trademark, and three trademarks in the United Kingdom of Great Britain and Northern Ireland.
According to the WhoIs, the disputed domain name was registered on February 13, 2004
The disputed domain name redirects to a parking page which features sponsored links including one entitled "Black and Decker" and others to the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant provides factual evidence as follows:
The Complainant's parent, Stanley Black & Decker, Inc., is a Fortune 500 company, and 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. Established in 1910, Black & Decker Inc. is the world's largest tool manufacturer, operating in countries across the globe.
The Complainant has a diverse portfolio of products. It also sells tools and other products under other well-known brands as well, such as DeWalt, Bostich, Stanley FatMax, Dustbuster, Workmate and Falcon.
The Complainant has invested significant resources in promoting its brand and to generate goodwill internationally, such as through sponsorship programs.
The Complainant makes the following legal arguments:
Firstly, the Respondent "must be presumed to have registered the disputed domain name with actual knowledge of the Complainant's global trademark rights in BLACK & DECKER and also to have deliberately chosen a confusingly similar domain name differing from those of the Complainant's brand by only one, easily overlooked letter and which is aurally identical to the Complainant's trademark rights."
Secondly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that it never authorized the Respondent to use the disputed domain name , nor to trade under the Complainant's trademark.
Thirdly, the Respondent registered and used the disputed domain name in bad faith. The Respondent deliberately chose to incorporate the Complainant's trademark in its entirety, the latter being both distinctive and globally recognized.
In support of its third contention, the Complainant asserts that, "[t]he clear inference to be drawn here, therefore, is that the Respondent benefits somehow from the underlying value of the Complainant's trademark and it is the underlying value in the trademark which allows the Complainant to use its brand to identify itself as the genuine and sole source of Goods and Services." In making this contention, the Complainant refers to Veuve Clicquot Ponsardin Maison Fondee en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
The Complainant also maintains that, "If it is necessary for the Respondent to possess the disputed domain, then presumably use of the trademark in the Disputed Domain Name is an essential part of its business." B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel determines that the disputed domain name is identical or confusingly similar to the Complainant's well known trademark. See The Black & Decker Corporation v. Deckerandblack,WIPO Case No. D2007-1581, holding that the Complainant's BLACK & DECKER trademark was "well-known" and existed "before the existence of the Internet".
In addition, the disputed domain name includes identical words to the Complainant's trademark, namely, "black" and "decker". The disputed domain name commences with the identical component, "black" and ends with the identical component "decker" to the Complainant's trademark.
The only difference between the disputed domain name and the Complainant's trademark is the fact that the words "black" and "decker" in the disputed domain name are conjoined with "an", rather than "&". In all other respects, the disputed domain name is identical to the Respondent's trademark. B. Rights or Legitimate Interests
The Panel determines that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Panel acknowledges that the above finding that the disputed domain name is identical or confusingly similar to the Complainant's trademark is not sufficient to grant the remedy requested by the Complainant. The Complainant needs also to establish that the Respondent does not have any rights or legitimate interests in the disputed domain name.
In this regard, the Panel notes that, not only has the Respondent registered a domain name that is confusingly similar to the Complainant's trademark. The Complainant also maintains that it did not grant any right to the Respondent to use that name. While the Complainant does not directly provide evidence in the Complaint of how the Respondent used the domain name after registering it, the Panel reasonably infers from the evidence provided by the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. That inference is based on the absence of a Response from the Respondent and of any evidence adduced that the Respondent might have such rights or legitimate interests, such as, for example, through a legitimate business whose founders had identical names to the Complainant's trademark, or by license from the Complainant. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's argument that the Respondent registered the disputed domain name in bad faith, notably in light of the globally known trademark of the Complainant, the fact that the Respondent must reasonably have known that the disputed domain name was confusingly similar to the Complainant's internationally known trademark, and the lack of demonstrable evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The argument that the Respondent used the disputed domain name in bad faith is less evident on the record. In particular, the Complainant has not argued that the Respondent used it in bad faith in attempting to sell the domain name to the Complainant, or to a third party. Nor has the Complainant argued in the Complaint that the Respondent has sought to mislead Internet users by directing them to the Respondent's or a third party's website in the belief that the disputed domain name was owned by the Complainant or that the Complainant had authorized its use.
Nevertheless, the Panel notes that the Complainant did send two cease and desist letters to the Respondent, to which the Respondent did not reply. In those letters, the Complainant noted that the disputed domain name was used in connection "with various commercial websites that promote and sell products, some of which use our client's name and trademark".
Therefore, the Panel holds that the Respondent, in placing itself in the position to so profit from the use of the disputed domain name at the expense of the Complainant, has demonstrated a bad faith use of the disputed domain name. In fact, examining the circumstances of the case, the Panel finds to be indicative of bad faith use the fact that the disputed domain name is being redirected to a parking page with pay-per-click links to Complainant's competitors. This affirms the likelihood that the Respondent is using the disputed Domain Name in order to intentionally attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website (paragraph 4(b)(iv) of the Policy).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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.
Leon Trakman
Sole Panelist
Date: June 29, 2015
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