Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant:

The Stanley Works and Stanley Logistics, Inc.
1000 Stanley Drive
New Britain, CT 06053
USA

Represented by:

William E. Marames, Esq.
Ms. Therese K. Francese
Arent Fox Kintner Plotkin & Kahn
1050 Connecticut Avenue, N.W.
Washington, D.C. 20036
USA

Respondent:

Thomas A. Vangunten
President
Camp Creek Co. Inc. (also doing business as Nailpro)
P.O. Box 172
Floyd, VA 24091
USA

The disputed domain names are:

1. stanleybostitch.com
2. stanley-bostitch.com
3. stanleybostitch.org
4. stanley-bostitch.net
5. stanley-bostitch.org
6. stanleybostitch.net
7. bostitch.net
8. bostitch.org
9. bostitchnails.com
10. bostitchtools.com

The Registrar for the disputed domain names is Network Solutions Inc. of Herndon, Virginia, USA.

This Complaint was filed on March 2, 2000, in accordance with the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy and Rules ("the Policy" and "the Rule(s)") and the World Intellectual Property Organization Arbitration and Mediation Center’s (the "Center") Supplemental Rules. The fee of $1,500 was paid by Complainant on March 2, 2000; on the same date a copy of the Complaint was sent to Registrar Network Solutions Incorporated (NSI) .

On March 5, 2000, the Center requested NSI check and report back on the identity of the Registrant of the contested domain names. The response from NSI was filed on March 6, 2000, and stated that NSI was the Registrar of the disputed domain names, and that the Registrant was Respondent Camp Creek Co., Inc. The registered contact person was Thomas A. Vangunten.

The Notification of Complaint and Commencement of Administrative Proceeding was sent electronically, by courier and by post to Respondent on March 8, 2000. Respondent’s Response was filed on March 27, 2000.

The Administrative Panel (one Panelist) was selected on March 31, 2000, in accordance with Rule 6(f). The Panelist, Dennis A. Foster, accepted the appointment and submitted a Declaration of Impartiality and Independence on March 31, 2000, (Rule 7). The Parties were notified of the Panel’s selection on April 1, 2000.

The Center has determined the Complaint and Response and all communications were submitted in accordance with ICANN’s Policy and Rules and the Center’s Supplemental Rules.

Under ICANN Rule 15(b), this decision is due by April 15, 2000.

This dispute arises out of Complainant’s assertion that it is the owner of certain trademarks (Section 2 above) using the Bostitch/Stanley names which Respondent has registered as domain names. Complainant has for over seventy years used the Bostitch/Stanley names in varying combinations to designate wire stitching, nailing, stapling and other fastening or attaching tools and devices that Complainant manufactures. Complainant submitted with its Complaint (pp. 3-4 and Annex B) exemplary copies of eight (8) United States trademark registrations of the names Bostitch and Stanley dating back to 1920.

Beginning on February 26, 1999, Respondent registered with NSI the ten (10) domain names set out in Section (2) above, all being combinations of the Stanley and Bostitch trademarks. Ownership of these domain names is the subject matter of this dispute.

A. Complainant

The Complainant Stanley Works and Stanley Logistics, Inc. contends the following:

--The Respondent Camp Creek Co., Inc. registered in bad faith the ten (10) domain names listed in Section (2) above with NSI beginning on February 26 ,1999. Complainant contends Respondent was well aware that Complainant was the owner of these trademarks because of registrations and the goodwill and notoriety the trademarks have acquired over the years as designators of Complainant’s products.

--According to Complainant, Respondent went further and set up websites using these domain names, with a home page created in August, 1999, (Complaint Annex C). The websites led some of Complainants’ clients to believe that Respondent is the source of Stanley and Bostitch products.

--After Complainant sent Respondent a cease and desist letter on

September 22, 1999 (Complaint Annex D), Respondent refused to close its websites and transfer the domain names to Complainant.

-- Complainant contends Respondent also confused clients by using its website to advise inquirers to write to Complainant’s legal counsel about ordering some of the products Complainant manufactures, and to make known instances of dissatisfaction with Complainant’s products.

--According to Complainant, Respondent has implied strongly it would turn over the domain names to Complainant for suitable compensation such as authorizing Respondent to sell more of Complainant’s products.

--To put further pressure on Complainant, Respondent used its website to tarnish Complainant’s trademark by making disparaging associations with Complainant and its products.

--Finally, Complainant contends the disputed domain names should be transferred to Complainant.

B. Respondent

--In its Response, Respondent contends the sole purpose of the websites is to promote the sale of Stanley Bostitch products. Respondent states it has been an authorized retail seller of Stanley Bostitch products since 1991.

--Respondent contends it never made any request for compensation, Complainant’s exhibits have been "manipulated", and Complainant’s contentions are "false, malicious and defamatory."

The Policy para 4(a) provides that Complainant must prove each of the following to obtain transfer or cancellation of the disputed domain names:

- that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

- that Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

Eight of Respondent’s registered domain names (Section 2 above) are identical to Complainant’s trademarks. The remaining two, bostitch.nails.com and bostitchtools.com are confusingly similar (Complaint p.3). Essentially, Respondent has appropriated the trademarks Stanley and Bostitch, sometimes rearranging them, sometimes adding a generic word such as nail, and has registered the names in various top level domains such as org., com. and net. Accordingly, we find Complainant satisfies the test that Respondent’s domain names be identical or confusingly similar to Complainant’s trademarks.

Complainant denies any direct connection with Respondent and contends Respondent’s use of the trademark is "unauthorized" (Complaint Annex D).

Respondent states it has been an authorized retail seller of Complainant’s products since 1991. There is little evidence of this: no authorization or contract of any kind has been produced. Nor is there any evidence of a mandate from Complainant to Respondent to open websites to "increase Complainant’s business."

Moreover, even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks. This Panel finds Respondent does not have sufficient rights or interests in the trademarks to allow Respondent to register them as domain names.

Complainant has produced (Complaint Annex B) copies of documents showing a long history of using the trademarks Stanley and Bostitch to designate the various products it manufactures.

Except for a generic refutation and a characterization of Complainant’s contention as "malicious", Respondent offered no evidence tending to disprove Claimant’s well-substantiated contentions of many years of trademark ownership and use.

There can be no doubt that Complainant’s trademarks are almost a household name in the United States. Respondent, which states it was a retail seller of Complainant’s products using the trademarks Stanley and Bostitch since 1991, undoubtedly was well aware of Complainant’s ownership of these trademarks at all times relevant to this dispute, including during the times Respondent registered the trademarks as domain names.

It necessarily follows that Respondent was in bad faith when it registered these ten (10) domain names with NSI beginning in February, 1999. To register so many domain names using so many combinations of Complainant’s trademarks is a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace (the Policy 4 ( bii). This is classic cybersquatting.

Complainant produced convincing evidence, unchallenged by Respondent, that Respondent stated in a letter of October 6, 1999, (Complaint Annex E) that a settlement could be reached. When Complainant wrote back on December 1, 1999 (Complaint Annex F) insisting that Respondent stop using Complainant’s trademarks as domain names, Respondent reacted by portraying on its homepage a dinosaur trapped in a tar pit along with the text:

"The Stanley Works is an industrial dinosaur. Stanley is not adapting well to the changing business climate. The New Economy is the meteorite that will hasten the extinction of this former industry giant." (Complaint Annex L)

This Panel fails to see how this action helps Respondent achieve its stated goal of using the domain names "to promote the sale of Stanley Bostitch products" (Respondent’s Response). This is trademark tarnishing for the purpose of disrupting Complainant’s business and a strong indication of bad faith (the Policy 4 (bi) and (biii).

Further evidence of bad faith is Respondent’s deliberately confusing Complainant’s clients by posting Complainant’s legal counsel’s contact information on Respondent’s website with an invitation to contact them to express any complaints about Complainant’s products (Complaint Annex M, the Policy 4 (biv). In consequence, Complainant’s legal counsel received inquiries about ordering Complainant’s products from customers in countries as disparate as Mexico and Germany.

Complainant also stated (Complaint p. 8), and Respondent does not refute except for its general denial, that Respondent has also registered as domain names the famous trademarks of Senco Products, Inc., another well-known manufacturer of fastening tools. This pattern of cybersquatting also gives rise to an adverse inference of bad faith (the Policy 4 (bi) and (biii).

Complainant’s evidence of Respondent’s bad faith (the Policy 4(b) is substantial and convincing to this Panel. Therefore, this Panel finds that Respondent was in bad faith because it solicited compensation for the domain names, tarnished Complainant’s trademarks to disrupt Complainant’s business, and engaged in a pattern of cybersquatting using Complainant’s and at least one other famous trademark.

Based on the above, and pursuant to Policy para 4(i) and Rule 15, this Panel orders that all ten (10) contested domain names registered by the Respondent Camp Creek Co., Inc., namely:

be transferred to the Complainant, the Stanley Works and Stanley Logistics, Inc. The Complainant has shown that it has owned these trademarks and used them continuously to distinguish its products for most of the past century, and that it plans to continue doing so in the future. The Respondent has no claim to these trademarks and its registrations are in violation of the ICANN Policy and Rules.

Dennis A. Foster
Sole Panelist

Dated: April 13, 2000