The Complainant is Stanley Black & Decker, Inc., United States of America, internally represented.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o, Czech Republic / Hulmiho Ukolen, Finland. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Gransy,s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2019. On June 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 24, 2019, 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 June 24, 2019 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 amended Complaint on June 25, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on July 29, 2019. 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. was founded 175 years ago, in 1843, by Frederick T. Stanley and incorporated in Connecticut in 1852. In March 2010, the Company completed a merger with The Black & Decker Corporation, a company founded by S. Duncan Black and Alonzo G. Decker and incorporated in Maryland in 1910. At that time, the Company changed its name from The Stanley Works to Stanley Black & Decker, Inc.
The Complainant 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, infrastructure solutions. In 2017, Stanley Black & Decker purchased the CRAFTSMAN brand.
In 2018, the Complainant had global revenue of USD 14 billion and had a market capitalization of USD 22.1 billion. In 2018, USD 9.8 billion in revenue was derived from the construction and DIY division of the business selling power tools, hand tools, storage, and accessories.
The Complainant is the owner of over 230 registered CRAFTSMAN trademarks, including but not limited to the following, as per trademark certificates submitted as annexes to the Complaint:
- United States of America trademark registration No. 1388833, for CRAFTSMAN figurative mark, filed on
October 2, 1985 and registered on April 8, 1986 in classes 7 and 23;
- United States of America trademark registration No. 1418186, for CRAFTSMAN figurative mark, filed on
December 9, 1985 and registered on November 25, 1986 in classes 8, 23, 28 and 44;
- United States of America trademark registration No. 1413049, for CRAFTSMAN figurative mark, filed on
March 3, 1986 and registered on October 14, 1986 in classes 7, 13, 19, 21, 23, 31, 34 and 35;
- United States of America trademark registration No. 1418956, for CRAFTSMAN figurative mark, filed on
April 25, 1986 and registered on December 2, 1986 in classes 7 and 23;
- United States of America trademark registration No. 1546082, for CRAFTSMAN figurative mark, filed on
June 22, 1988 and registered on July 4, 1989 in classes 7, 23, 12 and 19;
- United States of America trademark registration No. 1631332, for CRAFTSMAN figurative mark, filed on
April 25, 1990 and registered on January 15, 1991 in classes 7 and 23;
- United States of America trademark registration No. 1707786, for CRAFTSMAN figurative mark, filed on
August 14, 1991 and registered on August 18, 1992 in classes 7 and 23;
- United States of America trademark registration No. 1707787, for CRAFTSMAN figurative mark, filed on
August 14, 1991 and registered on August 18, 1992 in classes 7 and 23;
- Czech Republic trademark registration No. 228069 for CRAFTSMAN word mark, filed on May 22, 1998 and
registered on November 20, 2000 in classes 7,8 and 9;
- European Union trademark registration No. 000091025, for CRAFTSMAN word mark, filed on
April 1, 1996 and registered on Nov 20, 2000 in classes 7,8 and 9;
- United States of America trademark registration No. 2936154, for CRAFTSMAN figurative mark, filed on
October 17, 2003 and registered on March 29, 2005 in classes 7, 13, 19, 21, 23, 31, 34 and 35;
- United States of America trademark registration No. 2957029, for CRAFTSMAN figurative mark, filed on
October 17, 2003 and registered on May 31, 2005 in classes 8, 23, 28 and 44;
- European Union trademark registration No. 003404696, for CRAFTSMAN word mark, filed on
October 21, 2003 and registered on July 21,2006 in classes 6, 9, 11, 12, 18 and 20;
- European Union trademark registration No. 017953346, for CRAFTSMAN word mark, filed on
September 10, 2018 and registered on March 22, 2019 in classes 6, 7, 8, 9, 11, 20, 25, 35 and 37;
The Complainant is also the owner of the domain name , which was registered on July 30, 1998 and is used by the Complainant to promote its services under the trademark CRAFTSMAN, as well as of the domain name registered on September 11, 2007, which is currently not pointed to an active website.
The Disputed Domain Name was registered on November 27, 2005 and is currently redirecting users to different websites, which are not associated with the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant points out that Stanley Black & Decker, Inc is a Fortune 500 company and a diversified global provider of hand tools, power tools and related accessories, mechanical access solutions and electronic security solutions, engineering fastening systems, infrastructure solutions.
The Complainant highlights that the CRAFTSMAN brand is well known in many countries and products have been sold under this brand for almost 100 years. The Complainant has invested significant resources in global promotion of the CRAFTSMAN brand and generating goodwill therewith.
The Complainant contends that the Disputed Domain Name is identical to the trademark CRAFTSMAN in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the word “parts” and the generic Top-Level Domain (“gTLD”) “.com”.
Furthermore the Complainant asserts that the use of the term “parts” serves as an indication that spare “parts”, or replacement components are available for use with, or as replacements for, the Complainant’s own product componentry.
With reference to rights or legitimate interests in respect of the Disputed Domain Name, the Complainant states that it has been unable to find any goods or services offered by the Respondent under the Disputed Domain Name. All attempts by the Complainant to land at the Disputed Domain Name, resolve to a parking page, whilst attempts to land on “www.” resolve to a website which has no connection to the CRAFTSMAN products.
The Complainant highlights that as it appears that the Respondent is not offering any CRAFTSMAN products for sale, the registration of the Disputed Domain Name by the Respondent, can only result in the Respondent purporting to the genuine CRAFTSMAN part of Stanley Black & Decker, or to be in some way associated with CRAFTSMAN, neither of which is the case.
The Complainant further notes, that a bona fide use of the Disputed Domain Name should have in some way involved the Respondent’s website accurately disclosing the Respondent’s relationship with the trademark owner (i.e., the Complainant). In this case however, the Respondent has clearly purported to be himself the owner of the CRAFTSMAN trademark as opposed to being any third party offering CRAFTSMAN replacement components or spare parts for sale.
The Complainant submits that this false suggestion is in itself misleading and that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that it has never authorized the Respondent to use the Disputed Domain Name , nor has it ever given the Respondent permission to trade under the brand CRAFTSMAN.
The Complainant emphasizes that if the Respondent deemed it necessary to be in possession of the Disputed Domain Name, then presumably the use of the trademark CRAFTSMAN should have been considered as an essential part of his business. However, as the Respondent was not effectively using the Disputed Domain Name to sell products or spare parts with the trademark CRAFTSMAN, it would be fair to presume that the Respondent is benefiting in some way from the underlying value of the Complainant’s trademark.
The Complainant underlines that in using its trademark to operate the Disputed Domain Name, the Respondent is deliberately and illegitimately disrupting the business of the Complainant.
Furthermore, the Complainant asserts that whether the use of the trademark was made to identify the Complainant’s businesses or not, the registration has evidently been made in bad faith as the Respondent does clearly not need to own the Disputed Domain Name.
In addition, the Complainant asserts that the fact that a privacy shield was set up, is in itself an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of numerous trademark registrations for CRAFTSMAN in several countries of the world, as mentioned under Section 4 above.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the Disputed Domain Name.
The Panel finds that the Disputed Domain Name is confusingly similar to the trademark CRAFTSMAN as it reproduces the trademark in its entirety within the gTLD “.com”, which can be disregarded when comparing the similarities between a domain name and a trademark, and the mere addition of the descriptive word “parts” which does not prevent a finding of confusing similarity.
In view of the above, the Panel finds that the Complainant has proven that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent may establish a right or legitimate interest in the Disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy for the following reasons.
The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent’s 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 holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that in light of the well known character of the Complainant’s trademark in its field, the Respondent was more likely than not aware of the Complainant’s trademark.
In view of the registration and use of the trademark CRAFTSMAN and the Respondent’s combination of the trademark with the term “parts” which is descriptive of products commercialized under the trademark CRAFTSMAN, the Panel finds that the Respondent’s registration of the Disputed Domain Name is not likely to amount to a mere coincidence.
Moreover, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the Disputed Domain Name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the Disputed Domain Name was registered with a deliberate intent to create an impression of an association with the Complainant.
The Panel affirms that Internet users, in light of the contents of the web page linked to the Disputed Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning revenues from the Disputed Domain Name’s dynamic redirections (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, 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 other online locations.
In addition, as stated in section 3.6 of WIPO Overview 3.0, “Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. In some cases, particularly where the respondent does not avail itself of the opportunity to respond to claims based on the timing of the registration of the disputed domain name (such as a materially relevant change in underlying registrant), panels have been prepared to infer that the use of a privacy or proxy service may seek to mask the timing of the respondent’s acquisition of the domain name. Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.
In view of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For all 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.
Luca Barbero
Sole Panelist
Date: August 12, 2019
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