The Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America (“USA” or “United States”), represented by Davies Collison Cave Pty Ltd, Australia.
The Respondent is Stanley Security Installations Pty. Ltd. of Melbourne, Victoria, Australia, internally represented. 2. The Domain Names and Registrar
The disputed domain name and are registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2018. On January 16, 2018, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain names. On January 22, 2018, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 January 29, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2018. The Response was filed with the Center on February 19, 2018.
The Center appointed James A. Barker as the sole panelist in this matter on February 27, 2018. 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 is a United States Fortune 500 American manufacturer of industrial tools and household hardware and a provider of security products and services. The Complainant is the result of the merger of Stanley Works and Black & Decker on March 12, 2010.
As at January 2018, the Complainant owns more than 2,000 trademarks which incorporate the word “Stanley”, including 29 in Australia. For example, this includes Australian registration No. 1642976, dated August 25, 2014, for the mark STANLEY, which includes coverage for “centralised security alarms; centralised security systems; security alarms (other than for vehicles); tele-radio controls for electronic burglar alarms; warning alarms (other than for vehicles); cameras; video cameras; video camera security apparatus; video camera security installations; video camera security instruments” and other similar goods. The Complainant also has a European Union Trade Mark (“EUTM”) for STANLEY SECURITY SOLUTIONS, registered in 2012, and a EUTM for STANLEY SECURITY, registered in 2014.
The Complainant’s business expanded into the field of security systems and related security services in 2003/2004 in the USA, the United Kingdom of Great Britain and Northern Ireland, and elsewhere in the world, under a trademark for STANLEY SECURITY SOLUTIONS.
The Complainant operates a number of business units under various trademarks which it broadly categorizes into the fields of “tools and storage”, “security”, and “industrial”. One of the Complainant’s major business units is the Stanley business unit. In Australia, where the Respondent has his address, the Complainant (through its predecessor in title) has used the STANLEY trademark to identify a range of goods such as hand tools, hardware, and power tools since as early as 1916. Today the Complainant uses its STANLEY mark to identify a broader range of products and services, including in the field of security systems, alarms, access control, video surveillance, fire detection, and monitoring. The Complainant’s business, associated with its STANLEY mark, expanded into the field of security systems and related security services in 2003/2004. Since 2013/2014 the Complainant’s security business, globally, has operated under the STANLEY SECURITY mark.
The Complainant registered the domain names and in 2003, which revert to websites for the Stanley Security Installations Pty. Ltd. business.
The Complainant’s security business expanded in Australia in 2005, which the Complainant’s related entity, The Stanley Works Pty Ltd, acquired all shares in the company Sielox Security Systems Pty Ltd, which changed its name to Stanley Security Solutions Australia Pty Ltd in June 2014. Through that company, the Complainant operates a website for its security business located at , targeted to the Australian and New Zealand markets, as well as the broader Asia-Pacific region. The Complaint attaches evidence of various marketing materials for this business, and the Complaint details the Complainant’s expenses on sales and marketing in Australia over a number of years.
The Complainant, including its predecessor in title, has been a successful complainant in a number of domain name disputes relating to its STANLEY trademark. These include Stanley Black & Decker, Inc. v. JB van der Meide Beheer B.V.,WIPO Case No. DNL2013-0057, concerning the domain name .
The disputed domain names have a creation date of September 11, 2013. From evidence in the case file, it appears that the then registrant of the disputed domain names was Signal Security Pty. Ltd., the registrant contact name at the time of creation was “Justin Nesvanulica”, and that the registrations were transferred to the Respondent (according to the registration date confirmed by the Registrar) on September 12, 2017.
The Respondent is an Australian corporation registered in May 2016. Its Directors are Justin Stanley Nesvanulica and Sean Ness. Mr. Nesvanulica submitted the Response and is apparently a Director and representative of the Respondent. As noted above, he was also listed as the registrant contact name, and has been listed as the technical and administrative contact. For all intents and purposes, Mr. Nesvanulica appears to be the motivating individual behind the named Respondent. As such, the Panel has treated Mr. Nesvanulica as a joint Respondent in this case. Accordingly, and for convenience, references below to the Respondent include Mr. Nesvanulica, unless otherwise indicated. 5. Parties’ Contentions A. Complainant
The Complainant hired a private investigation firm to investigate the Respondent and its interest in and use of the disputed domain names. The Complaint attaches a copy of the investigation report and a follow up report from November 2017. The investigation disclosed, inter alia, that:
- the Respondent (Stanley Security Installations Pty. Ltd.) does not carry on a business of any kind,
- the Respondent is related to another entity, Signal Security Pty. Ltd., which was the previous registrant of the disputed domain names and shares the same directors as the Respondent,
- there was no use of the Stanley name at the business premises of Signal Security Pty. Ltd.,
- Mr. Nesvanulica was not commonly known by his middle name “Stanley”,
- Signal Security operated in the security industry and has a website at “”.
On July 31, 2017, the Complainant sent a letter of demand to Signal Security Pty. Ltd., the then registrant of the disputed domain names. The Respondent did not comply with the demand but offered a settlement of terms unacceptable to the Complainant. At the time that that letter was sent, the disputed domain names did not resolve to an active website. At some time after that letter was sent, the disputed domain names began to resolve to a one page website. As evidenced in the Complaint, that website features a photo of a person presumably fitting a security system in the roof of a bookshop, next to the banner stating “Stanley Security Installation Solutions” and “Electronic Security Labour Hire”. The lower left corner of that page includes the words “Specialised help is on the way” and “Full website coming soon”.
The Complainant, firstly, alleges that the disputed domain names are identical or confusingly similar to the Complainant’s registered marks. The ownership and reputation of the Complainant’s marks have been recognized in prior domain name decisions. The relevant part of the disputed domain names wholly incorporates the Complainant’s STANLEY and STANLEY SECURITY marks. The addition of the descriptor “solutions” does not serve to negate the dominant impression of the Complainant’s STANLEY and STANLEY SECURITY marks.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant says that there is no evidence that the Respondent has made a bona fide use of the disputed domain names, or demonstrable preparations to use them, before any notice of this dispute. The Respondent does not operate a business which is a going concern nor has it taken preparatory steps to do so. The Complainant refers to the findings of its private investigation (outlined above), including that the Respondent is not registered or authorized to operate within the security industry in the State of Victoria.
Thirdly, and on the basis of similar facts to those outlined above, the Complainant alleges that the disputed domain names have been registered and used in bad faith. The Complainant notes that “the Respondent is active in the security industry in particular under the Signal Security business”. The Complainant contends that the Respondent knew or should have known of the existence of the Complainant and its relevant trademarks. The disputed domain names in this case were registered in 2013. It was not until after the previous registrant received a letter of demand in July 2017 that it caused the disputed domain names to resolve to one page active websites. B. Respondent
The Response states that the Respondent, Justin Stanley Nesvanulica, has owned an electronic security business in Australia since 2000. The Respondent says he registered the disputed domain names in connection with making technical teams available for short to medium term hire to other security companies. This concept was never intended to be Mr. Nesvanulica’s primary business: “the development was slow going as it was worked on only when time permitted”. After receiving a letter from the Complainant’s lawyers in July 2017, the Respondent “wanted to show further intent and uploaded an ‘under construction’ landing page.”
The Respondent says that both the disputed domain names have been registered in accordance with the auDA published policy.
The Respondent says that the Complainant, Stanley Black & Decker Inc., had been trading in Australia since 2005 after purchasing Sielox Security Systems. The Complainant continued to trade under that name until it changed the company name in June 2014 to Stanley Security Solutions Australia Pty Ltd, which was nine months after Mr. Nesvanulica had registered the disputed domain names.
The Respondent says that there is no hierarchy of rights in the domain name system. A registered trademark does not confer any better entitlement to a domain name than a registered company or business name. “In addition, the evidence put forward as to [the Complainant’s] use of relevant trademarks in Australia must not be considered as they have deliberately conflated a number of non-Australian registrations with what is only a pending application in Australia.”
The Respondent provides evidence of its company registration under the name “Stanley Security Installations Pty. Ltd.” The Respondent (Mr. Nesvanulica) also provides photographic evidence of his Victorian registration as a “private security individual”. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances.
The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. A. Identical or Confusingly Similar
It is not entirely clear which of the Complainant’s marks it relies on to establish confusing similarity with each of the disputed domain names. The Complainant alleges that the relevant part of the disputed domain names wholly incorporates its STANLEY and STANLEY SECURITY marks and are, as such, substantially identical to those marks. [The Complainant does not appear to rely on its mark for STANLEY SECURITY SOLUTIONS in this respect.]
The Panel has little difficulty in finding that the disputed domain names are relevantly identical to the Complainant’s STANLEY SECURITY and STANLEY SECURITY SOLUTIONS trademarks, and are confusingly similar to the Complainant’s STANLEY trademark. In the latter respect, as the Complainant notes, the Complainant’s STANLEY mark is entirely incorporated in each of the disputed domain names. Previous panel authority has accepted that the entire incorporation of a mark can be a sufficient basis for a finding of confusing similarity. In addition, the Respondent itself has not contested this element of the Complainant’s case.
For these reasons, the Panel finds that the disputed domain names are identical and confusingly similar to the Complainant’s marks. B. Rights or Legitimate Interests
The second issue to be resolve is whether the Respondent has “no rights or legitimate interests” in respect of the disputed domain names (emphasis added). That is, the issue for the Panel to determine is not whether the Complainant has better rights (however defined) than the Respondent. The Complaint cannot succeed if the Panel finds that the Respondent has at least some rights or legitimate interests in the disputed domain names.
In a note to this element of the Policy it is made clear that “auDA has determined that ‘rights or legitimate interests in respect of the domain name’ are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.” As such, the Respondent’s argument that it has met those eligibility requirements is not sufficient to determine whether it has any rights or legitimate interests in the disputed domain names.
The totality of the evidence in this case points to two other possible bases on which the Respondent might claim some rights or legitimate interests in the disputed domain names:
Firstly, the Respondent points to its registered company name for “Stanley Security Installations Pty. Ltd.” But this does not, by itself, provide a foundation for any rights or legitimate interests contemplated by paragraph 4(a)(ii) of the Policy. This issue is squarely addressed in the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), July 2014. In relation to the issue of whether a respondent’s registration of a company name corresponding to a disputed domain name automatically generates rights or legitimate interests, paragraph 2.4B of that Overview provides as follows:
“The fact that a respondent has registered a business name or a company name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name or the company name. The reason for this is that the registration of a business name or company name does not provide proprietary rights in the name. […] The registration of a company name is a legislative requirement that needs to be satisfied where an entity is incorporated.
The critical issue appears to be whether the respondent has traded under the business name or company name in good faith. The respondent will generally be able to establish that it has rights or legitimate interests in a domain name that corresponds to its registered business name or company name where it has actually traded, or intends to trade, under that name. Where, however, the trading under the business name or company name, or the purpose of the business name or company name registration, is not bona fide, neither trade under the name nor the fact of registration of the name will be sufficient to establish that the respondent has rights or legitimate interests in the corresponding domain name.”
There is no dispute that the Respondent has not actually traded under the company name that it has registered. Beyond registration of the disputed domain names, there is also little evidence of the Respondent’s (Mr. Nesvanulica) stated intention to use the disputed domain names in connection with trade under the registered company name of “Stanley Security Installations”. The disputed domain names were registered in 2013 apparently to Signal Security Pty. Ltd. – a company which appears to be the primary business involving Mr. Nesvanulica, who is also a Director of the Respondent company, Stanley Security Installations Pty. Ltd. The Response includes a bare statement that the Respondent intended to trade using the disputed domain names, but provides no evidence in this connection of any effort undertaken to realise that stated intention.
Secondly, although the Respondent does not advance this argument explicitly, the disputed domain names incorporate the Respondent’s (Mr. Nesvanulica’s) middle name “Stanley”. There is no dispute that the Respondent operates in the security industry, primarily through the business “Signal Security”.
The Complainant appears to argue that the Respondent’s middle name is not a sufficient basis for establishing any rights or legitimate interests in the disputed domain names. This is, the Complainant argues, because the Respondent is not “commonly known by” his middle name. Relevantly, paragraph 4(c)(ii) of the Policy provides that a Respondent may demonstrate rights or legitimate interests by evidence of circumstances that “you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”. Those circumstances are stated to be “without limitation” on other types of circumstances that may demonstrate rights or legitimate interests.
As evidence, the Complainant points to its private investigation report, including evidence that its investigators called Signal Security asking for “Stanley” but that the staff who took that call did not know Mr. Nesvanulica by that name. The report also summarizes a direct conversation with , in which the investigator “confirmed with him that he had never been referred to as ‘Stanley’ and that he was not in the habit of using his middle name as an alternative identifier.” The Response does not corroborate or contradict this account.
The auDRP Overview 1.0 states that the position on what amounts to evidence of being “commonly known”, under paragraph 4(c)(iii) of the Policy is not yet established. Under the UDRP, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the position at paragraph 2.3 relevantly as follows:
“For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights.
The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP.
[…]
Absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID”.
In considering whether the Respondent is “commonly known” by his middle name, the Panel takes a similar approach to the majority view outlined in the WIPO Overview 3.0.
Previous panels have acknowledged that a long-standing principle of trademark law is the right of a person to use his or her own name in connection with a business. Dell Computer Corporation v. Logo Excellence,WIPO Case No. D2001-0361 (although in that particular case, the then respondent did not in fact advance any evidence that the disputed domain name corresponded to his personal name). A number of previous panel decisions have followed this approach in relation to first, last, and middle names. These include the following cases:
- In Alessandro International GmbH v. Alessandro Gualandi,WIPO Case No. D2014-2111, the panel found that “The use of one’s own first name in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the disputed domain name.”
- Panels have found that a respondent’s use of an evidenced last name in a domain name is sufficient to show that the respondent is “commonly known” by that name: see, e.g., CKL Holdings N.V. v. Paul Flammea,WIPO Case No. D2016-1340.
- Previous Panels have also considered whether a Respondent’s registration of a middle name is sufficient to establish rights or legitimate interests in a domain name that incorporates that name. For example, in Weissenberger AG v. Imagelinc,WIPO Case No. D2003-0025, the panel noted that, despite some doubts about the respondent’s version of events “these doubts as to the [Respondent] Andrew Gunnar Nelson use of his middle name ‘Gunnar’ are not sufficient to establish a prima facie case of Respondent’s lack of legitimate right or interest in the domain name. […] [T]he Respondent’s explanations do not stretch credulity and without contrary evidence it is impossible to infer that the Respondent has not used the domain name for the declared purposes.”
The latter case is instructive. In this case, the Panel has some doubts that the Respondent would have been unaware of the Complainant’s business both when the disputed domain names were formally “transferred” to the Respondent in 2017 and in 2013 when initially registered, given that the Complainant has been in business since the early 1900s and operates in the security industry with which the Respondent is also familiar. Inferring this awareness, there is some possibility that the Respondent was aware of the potential associations of the disputed domain names with the Complainant’s business. The Respondent provides no real explanation as to why it registered a company name, and the disputed domain names, based on the middle name of its Director, rather than names that more closely corresponded to what appears to be its currently associated business, Signal Security.
Nevertheless, in the circumstances of this case, the Panel considers that the Respondent has established at least some right in the disputed domain names, based on part of the personal name of its Director, Mr. Nesvanulica, and the general field of business in which Mr. Nesvanulica apparently operates. There is no dispute in this case that the Respondent, Mr. Nesvanulica, does in fact have “Stanley” as his middle name. The Respondent provided photographic evidence of his private security registration in the State of Victoria, Australia. The name of that registration corresponds to the name of Mr. Nesvanulica, who is also listed as the registrant contact name in the WhoIs details confirmed by the Registrar. In addition, there is no dispute that Mr. Nesvanulica has worked in the security business, at least as a Director of Signal Security Pty. Ltd. As noted further above, the Panel also considers that Mr. Nesvanulica should be treated as a joint Respondent in this case, as he appears to have been the primary individual behind the registration of the disputed domain names.
As noted in the WIPO Overview 3.0, cited above, evidence showing that a respondent is commonly known by the domain name may include some form of government-issued ID. This appears to be what the Respondent has provided, in the form of his private security registration. In any event, it is not in dispute that “Stanley” is Mr. Nesvanulica’s middle name. It is also not in dispute that “Stanley” is a common name.
The Complainant argues that the Respondent is not commonly known by that name, because of the apparent lack of awareness of that name among Mr. Nesvanulica’s colleagues. In other words, the Complainant appears to argue that, having the name in fact is not sufficient to show that the Respondent is commonly known by it. However, consistent with the previous panel decisions referenced above and the WIPO Overview 3.0, the Panel considers that, the Respondent can be commonly known by a name that is his actual name. Even if this were not so, the circumstances set out in paragraph 4(c)(ii) of the Policy are stated to be without limitation. Other circumstances can demonstrate rights or legitimate interests. The Respondent’s rights in a personal name can, in the Panel’s view, go towards demonstrating such circumstances.
None of this is to say that the Respondent has presented a strong case, or that the Complainant may not have some argument against the Respondent, for example under Australian trade practices law for misleading and deceptive conduct. Some aspects of the Respondent’s conduct are also suggestive that he has not entirely acted in good faith – for example, the Respondent’s posting of a placeholder page after years of inactivity, and following receipt of a cease-and-desist letter, might suggest that the Respondent was seeking to give his website some appearance of legitimacy. On the other hand, the Panel can imagine that there could be alternative interpretations of this conduct. For example, these might include that the Respondent is not legally represented or does not have a sophisticated understanding of domain name dispute, and may have thought that such conduct would ‘shore up’ his case.
The Panel notes that its decision in this case does not affect any rights which the Complainant may have to pursue other legal avenues. As noted in paragraph 4(k) of the Policy, “The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you [the respondent] or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.”
The purpose of the Policy is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”: See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. See also, e.g., Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. The jurisdiction of the Panel is limited to considering the elements set out in paragraph 4(a) of the Policy. As noted above, the Panel cannot rule out that the Respondent has at least some rights in the disputed domain names, based on his personal name and the field of business in which he operates.
For these reasons, the Panel finds that that the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered or Subsequently Used in Bad Faith
To succeed, the Complainant must establish all of the three elements in paragraph 4(a)(i) – (iii) of the Policy. As the Complainant has not established the second element, it is not necessary for the Panel to proceed to consider the third element (as to whether the disputed domain names were registered or subsequently used in bad faith). 7. Decision
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Sole Panelist
Date: March 13, 2018
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