Complainant is Stanley Black & Decker, Inc., United States of America (“United States”), internally represented.
Respondent is Domain Administrator, PrivacyGuardian.com, United States / Dwayne Rowland, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2019. On September 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 13, 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 Respondent of the Complaint, and the proceedings commenced on September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. On September 21, 2019, pursuant to paragraph 5(b) of the Rules, Respondent requested an automatic extension of four days. Respondent also inquired on that same date that, given “[o]ut of pocket expenses for registration and maintenance of the Domain Name over a 20 year period is estimated to be about USD 5,000”, “[h]ow do we proceed if the complainant can agree to that number and may this transaction be held private?”. The Center extended the due date for the Response to October 10, 2019. The Response was filed with the Center on October 9, 2019. The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 16, 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 Complainant is a Fortune 500 company and diversified global provider of hand tools, power tools and related accessories, mechanical access solutions and electronic security solutions, engineering fastening systems, and infrastructure solutions. In 2018, Complainant had global revenue of USD 14 billion with 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. In 2017 Complainant purchased the CRAFTSMAN brand, including a range of global trademark registrations. Complainant is the owner of over 230 registered CRAFTSMAN trademarks, globally, including the United States trademark CRAFTSMAN, registered on April 8, 1986, with the registration No. 1388833. The Domain Name was registered on April 17, 2001. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant contends the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. As noted above, Complainant is the owner of the CRAFTSMAN trademarks. The Domain Name, (ii) Rights or legitimate interests Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has been unable to find any goods or services offered by Respondent under the Domain Name. All attempts by Complainant to land on the webpage linked to the Domain Name redirect to what seems to be a variable landing page, giving different results on each attempt. Thus, it appears that Respondent is not offering any CRAFTSMAN products for sale. If the Domain Name were to be legitimately used, then genuine CRAFTSMAN products would be offered for sale. Thus, registration by Respondent of the Domain Name only results in Respondent purporting to be the genuine CRAFTSMAN part of Complainant, or to be in some way associated with CRAFTSMAN, neither of which is the case. Bona fide use would require Respondent to offer genuine CRAFTSMAN product for sale. Complainant contends that bona fide use of the Domain Name by Respondent must also involve Respondent’s website accurately disclosing Respondent’s relationship with the trademark owner, that is, Complainant. In this case, Respondent purports, by use of the Domain Name, to itself be CRAFTSMAN, as opposed to being any third party which offers genuine CRAFTSMAN product for sale. This false suggestion that Respondent is the owner or authorized user of the trademark CRAFTSMAN or indeed that the website is an official website of Complainant, is misleading. (iii) Registered and used in bad faith Complainant states that it has never authorized Respondent to use the Domain Name. Nor has Complainant given Respondent permission to trade under the CRAFTSMAN brand. Complainant argues that if it is necessary for Respondent to possess the Domain Name, then presumably use of the trademark is an essential part of its business, which it would be if Respondent were offering genuine CRAFTSMAN products, or spare parts, for sale, as an example. The clear inference to be drawn here, is that Respondent benefits somehow from the underlying value of Complainant’s trademark; however, it is this underlying value in the trademark, which allows Complainant to use its brand to identify itself as the genuine and sole source of goods and services. Conversely, Complainant makes the point that if it is essential for Respondent to use Complainant’s trademark to operate the Domain Name, then to do so must, by definition, to illegitimately disrupt Complainant’s business, should Complainant wish to avail itself of this Domain Name. Complainant contends that either the use of the trademark in the Domain Name is necessary to identify Complainant’s businesses (in which case the registrations have been obtained in bad faith) or it is irrelevant (in which case bad faith is evident because Respondent does not need to own the Domain Name). Complainant further contends that the fact a privacy shield has been set up is, of itself, an indication of bad faith. For what genuine business reason would a trader register a domain name and then not show themselves to the trading world. The purpose of a domain name is to showcase the trader’s business to the trading world. Putting up barriers to that trade by erection of a privacy shield simply shows no intent to trade and provides further evidence that the Domain Name was acquired in bad faith. The Domain Name incorporates Complainant’s trademark in its entirety. It has been shown that the trademark is distinctive (by virtue of the registrations) and enjoys extensive global reputation. Following two emails attempts by Complainant in July 2019, to contact Respondent via its registrant contact telephone number, with both emails having bounced back as undeliverable, on July 31, 2019, a telephone message was received from a […] Rowland purporting to offer the Domain Name for sale at a purchase price of USD 38,000. Complainant states this offer to sell the Domain Name for a sum far in excess of the registration fee is another example of it having been registered in bad faith, contrary to paragraph 4(b)(iii) of the Policy. B. Respondent (i) Identical or confusingly similar Respondent states that it owned and operated Neal Systems Inc. from 1985 until 1996, a company that published accounting software for many years. In 1996 Respondent and […] Neal closed this company and entered the light manufacturing business, doing business as The Neal Company. The Neal Company built and delivered computer systems with Neal Accounting software installed. The Internet opened up possibilities for The Neal Company to register domain names and provide Internet services to customers. At about this time Respondent chose to pursue outdoor recreation equipment by manufacturing cabins and campers. The first products were a “Craftsman’s Cabin” and “Craftsman’s Camper” with the key words having the same first letter “C”. Respondent states that he built and sold cabins until 2007, when the weak economy forced the shutdown of the business. The domain names registered by Respondents were placed with search sites, which provided small revenue that continues until this day. Respondent observes that while Complainant’s European Union trademarks are all coded “Acquired Distinctiveness”, Respondent disagrees with this designation. Respondent further observes that Complainant’s United States trademarks are coded “Typed Drawing”, where the text is a dictionary word. Respondent urges that this style element is prominent, making the mark dissimilar to the Domain Name. Respondent disagrees with Complainant’s claim that the Domain Name - which is comprised of the word “craftsmans” - is simply the plural of “craftsman”. Instead, Respondent contends that the word “craftsmen” is the plural of “craftsman”. The word “craftsman’s” is a possessive noun describing the possessions of a craftsman. Thus, Respondent contends that the “s” adds meaning to the Domain Name outside of Complainant’s rights in the mark. Further, “craftsman” is not known by the public to be a trademark brand of Complainant. (ii) Rights or legitimate interests Respondent asserts that the Domain Name is a common dictionary word. It describes all products made and services performed by a craftsman. While it is a desirable domain name, it is undesirable as a trademark. Respondent states that most trademarks using “craftsman” or “craftsman’s” place a disclaimer on the word “craftsman”. Over 3,797 domain names are registered containing the word “craftsman”. A Google.com search for “craftsman’s” returns 1,150,000 web pages, none of which are Complainant’s products. Respondent claims he has rights to register a common dictionary word to promote products offered for sale in commerce. Complainant has not proven that Respondent has no rights in the Domain Name. Using the Internet Archive Wayback Machine, Respondent has provided a copy of a webpage dated September 26, 2002, which states “Craftman’s Brand for a future product of The Neal Company – Dexter, Georgia.” Respondent argues this shows demonstrable preparations to use the Domain Name in commerce. Also using the Wayback Machine, Respondent provided a webpage dated September 18, 2004, for “DuraFab Wilderness Log Cabins,” claiming this shows Respondent’s use of the Domain Name for a bona fide offering of goods. A listing of 13 domain names, including the Domain Name, is included at the bottom of this webpage. Respondent also provided a webpage dated February 19, 2016, for a product called The Little Camper. Respondent states that he has invested thousands of dollars in plant equipment, material, research and development and labor for the “Craftsman’s Cabins”. The cabins were constructed with portable log panels bound with steel chain and re-bar. (iii) Registered and used in bad faith Respondent states that Complainant called Respondent multiple times requesting to purchase the Domain Name. Ms. Rowland finally returned the call to Complainant’s law firm, providing a number so they would stop calling. Respondent notes that it is illegal to record a phone conversation in Connecticut without the knowledge of all parties, and no notice was provided. Respondent states that the Registrar coded all of the domain names, including the Domain Name, as “private” without Respondent’s permission. Respondent moved the Domain Name to the registrar NameSilo, LLC, which provided “private” service without charge by default. Respondent has never paid a fee for any “private” services and does not wish for any “private” services. Respondent registered the Domain Name on April 16, 2001, and has maintained ownership of the Domain Name for over 18 years. Complainant has not shown any proof anyone other than Respondent owned the Domain Name. Respondent agrees with Complainant’s statement that Respondent did not use the Domain Name to display, sell or promote Complainant’s products. Complainant acquired rights to the trademark in March 2017 from a third party. Respondent highlights that where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith. Therefore, Respondent argues that Complainant did not prove Respondent registered the Domain Name in bad faith because it was registered many years prior to Complainant acquiring rights in the trademark. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its CRAFTSMAN trademark, based on numerous trademark registrations for the mark and use of the mark in numerous countries for many years, including the United States. Further, the Panel determines that the Domain Name is confusingly similar to the CRAFTSMAN mark, as the Domain Name incorporates the mark in its entirety, while adding the letter “s”, which might be interpreted as either the singular possessive (without an apostrophe as it is not possible to include an apostrophe in a domain name) or plural tense (although “craftsmen” would be the more appropriate term). In any event, the addition of the “s” does not prevent a finding of confusing similarity. The CRAFTSMAN mark is the dominant feature in the Domain Name, clearly recognizable within it. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”). Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”. Here, the Panel determines that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, while Respondent has provided evidence that, on balance, falls short demonstrate any rights or legitimate interests in the Domain Name. Complainant has indicated that it was unable to find any goods or services offered by Respondent under the Domain Name, and that all attempts by Complainant to land on the webpage linked to the Domain Name redirect to a variable landing page, giving different results on each attempt. Further, Complainant indicated that it never authorized Respondent to use the Domain Name, nor gave Respondent permission to trade under the CRAFTSMAN brand. Complainant asserts that the Domain Name brings across the misleading suggestion that Respondent is the owner or authorized user of the CRAFTSMAN trademark, or that the website is an official website of Complainant. In response, Respondent has indicated that he has owned the Domain Name for more than 18 years and that it corresponds to a common dictionary word, and that he has the right to register a common dictionary word to promote products offered for sale in commerce. Further, Respondent claims that his company, The Neal Company, marketed a product named the “Craftsman’s Cabin” during the period 1996 until 2007. The evidence provided by Respondent is confusing, however, because he provided a webpage dating from September 2002, which stated “Craftman’s Brand for a future product of The Neal Company – Dexter, Georgia” and two other webpages dating from 2004 and 2016, respectively listing “DuraFab Wilderness Log Cabins” and “The Little Camper”. If Respondent used the Domain Name in connection with a product called the “Craftsman’s Cabin”, this use, according to Respondent, was apparently discontinued more than 10 years ago in 2007, at which time the Domain Name (and Respondent’s other domain names) were linked to search sites, providing a small stream of revenue to Respondent that continues to this day. WIPO Overview 3.0, section 2.11, provides that “[p]anels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint,” while “[p]anels will often also consider any evidence of previous legitimate use under the third UDRP element.” Here, any use of the Domain Name by Respondent for a business purpose other than linking it to a landing page was apparently discontinued by 2007. Complainant indicated that the Domain Name, prior to the filing of the Complaint, resolved to a variable landing page. As to this use, WIPO Overview 3.0, section 2.9, provides that “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. Here, there is no evidence that the links on the landing/search pages to which the Domain Name resolved compete with Complainant and its CRAFTSMAN branded products and services. However, the Domain Name itself, which is comprised of Complainant’s CRAFTSMAN mark with the addition of an “s”, may itself draw on the reputation of Complainant’s mark, bringing users not to Complainant’s website but to the landing/search pages linked to the Domain Name. As to whether registering a dictionary word gives rise to any rights or legitimate interests, WIPO Overview 3.0, section 2.10.1, states that: “[p]anels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” Here, there is no evidence that Respondent is currently using the Domain Name in connection with the dictionary meaning of the word “craftsmans”. In sum, the Panel finds, on the balance of the probabilities, that Respondent’s use of the Domain Name currently and since 2007 does not support a showing of any rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been adequately rebutted by Respondents. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires Complainant to demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel finds, on the balance of the probabilities, that Complainant has failed to establish that Respondent registered and is using the Domain Name in bad faith. Respondent has owned the Domain Name for more than 18 years. When first registering the Domain Name in 2001, Respondent was operating The Neal Company, which was involved (for a period of approximately 10 years) in manufacturing cabins and campers for recreational use, including a product that was at some point called the “Craftsman’s Cabin”. While Respondent has provided only limited information concerning The Neal Company and the naming of any cabins or campers it produced, the relevant point is that this evidence, as signaled by WIPO Overview 3.0, section 2.11 (noted above), reflects a previous legitimate use and shows, in any event, that Respondent was not targeting Complainant’s CRAFTSMAN trademark when registering the Domain Name. Further, while the Domain Name has been held by Respondent for more than 18 years, Complainant has provided scant evidence of Respondent’s bad faith use of the Domain Name during that period, prior to being contacted by Complainant. Complainant argued that an inference should be drawn that Respondent is benefiting from the underlying value of Complainant’s trademark. However, as noted above, Complainant has presented no evidence that the landing/search pages (to which the Domain Name was linked) contained links to products or services competing with Complainant and its CRAFTSMAN branded products and services. Thus, just as Respondent’s use of the Domain Name for a variable landing/search page alone does not confer rights or legitimate interests on Respondent, so too this use, on the present record, is insufficient to show that Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant and Respondent are not competitors. There is no evidence before the Panel to suggest that Respondent, through his website or otherwise, had targeted Complainant in any manner, such as making reference to Complainant or its CRAFTSMAN mark, or offering advertisements for products that compete with the products offered by Complainant under the CRAFTSMAN mark. Further, given that the Domain Name does correspond to a dictionary term and that Respondent asserted a previous legitimate use for the Domain Name, there is insufficient evidence to show that Respondent has maintained ownership of the Domain Name primarily for the purpose of disrupting Complainant’s business by depriving Complainant of the ability to avail itself of this Domain Name. Concerning the use of a privacy shield, Respondent indicated that this was the default approach of the registrars it used for registering the Domain Name. However, even assuming that Respondent shares responsibility for use of a privacy shield, this factor alone, without other indicia of bad faith, is insufficient in view of the circumstances of this case to support a finding of bad faith. Finally, Complainant has pointed to a phone call from Respondent’s spouse, responding to previous calls from Complainant’s counsel, in which she offered to sell the Domain Name for USD 38,000, a sum far in excess of the registration fee. The Panel observes that Respondent also sent an email to the Center inquiring about the possibility of settling this case for USD 5,000, which Respondent indicated was an approximate estimate for maintaining the registration and maintenance of the Domain Name over a 20 year period. The Panel cannot conclude, on the basis of the particular evidence in this case, that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant. The Domain Name has been registered and held by Respondent for more than 18 years and during that period Respondent at no point contacted Complainant to offer the Domain Name for sale. Further, there is an absence of circumstances indicating that Respondent’s aim in registering the Domain Name was to profit from or exploit Complainant’s trademark. It was only in response to contacts from Complainant’s counsel that an offer was made. See Billy Bob’s Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2016-1221; WIPO Overview 3.0, section 3.1.1 (“Circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific” and “the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from or exploit the complainant’s trademark, can inform a panel’s assessment of the respondent’s intent.”). In conclusion, the Panel determines, for all of the above reasons, that Complainant has not satisfied the third element of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Christopher S. Gibson
Sole Panelist
Date: November 5, 2019
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