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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
The Black & Decker Corp. v. Eric Savelle dba Tools Plus, Inc.
Claim Number: FA0102000096700
PARTIES
The Complainant is The Black & Decker Corporation, Towson, MD, USA ("Complainant") represented by William G. Pecau, Esq., of Pennie & Edmonds LLP. The Respondent is Eric Savelle, Waterbury, CT, USA ("Respondent") represented by Ari Goldberger, of ESQwire.com Law Firm, Cherry Hill, NJ, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are "dewalt-power-tools.net", "dewalt-woodworking-tools.com", "dewalt-woodworking-tools.net", "dewaltwoodworkingtools.org", "dewaltpowertools.org", "dewalt-power-tools.org", "dewalt-power-tools.com", "dewalt-power-tool.com", and "dewalt-woodworking.com" registered with DotRegistrar.com & Domain Registration Services.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panel in this proceeding.
Daniel B. Banks, Jr., Louis E. Condon, and M. Kelly Tillery, as the Panel.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 21, 2001; the Forum received a hard copy of the Complaint on February 23, 2001.
On February 22, 2001 & February 23, 2001, DotRegistrar.com & Domain Registration Services confirmed by e-mail to the Forum that the domain names "dewalt-power-tools.net", "dewalt-woodworking-tools.com", "dewalt-woodworking-tools.net", "dewaltwoodworkingtools.org", "dewaltpowertools.org", "dewalt-power-tools.org", "dewalt-power-tools.com", "dewalt-power-tool.com", and "dewalt-woodworking.com" are registered with DotRegistrar.com & Domain Registration Services and that the Respondent is the current registrant of the name. DotRegistrar.com & Domain Registration Services has verified that Respondent is bound by the DotRegistrar.com & Domain Registration Services registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 21, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@dewalt-power-tools.net, postmaster@dewalt-woodworking-tools.com, postmaster@dewalt-woodworking-tools.net, postmaster@dewaltwoodworkingtools.org, postmaster@dewaltpowertools.org, postmaster@dewalt-power-tools.org, postmaster@dewalt-power-tools.com, postmaster@dewalt-power-tool.com, postmaster@dewalt-woodworking.com by e-mail.
A timely response was received and determined to be complete on March 21, 2001.
On April 2001, pursuant to Respondent’s request to have the dispute decided by a three member Panel, the Forum appointed M. Kelly Tillery, Esq., Honorable Louis E. Condon and Daniel B. Banks, Jr. as the Panel.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
Complainant is a global manufacturer and marketer of quality power tools, hardware and
home improvement products and since 1923, has been engaged continuously in the power tool industry under the DEWALT name.
Complainant's DEWALT trademark has been registered in the United States Patent and Trademark Office (USPTO) since 1956 and has been in use in commerce since at least as early as 1923. The DEWALT mark is currently protected under numerous trademark registrations worldwide and among those are registrations with the USPTO as follows:
MARK REG. NO. REG.DATE
DEWALT (stylized) 621,152 Feb. 14, 1956
DEWALT & design 1,328,000 April 12, 1985
DEWALT 1,826,837 March 15, 1994
DEWALT & design 1,734,404 November 24, 1992
DEWALT (stylized) 1,734,403 November 24, 1992
DEWALT & design 1,950,781 January 23, 1996
Complainant's DEWALT mark has become famous and is recognized and relied upon by the trade and the public as identifying Complainant's goods and services. Since February 1998, Complainant has maintained a comprehensive web site at dewalt.com that it uses to advertise, promote, market and sell its DEWALT products. The DEWALT mark is an essential part of Black & Decker's ability to conduct business online.
The Respondent Eric Savelle does business as Tools Plus, Inc., which sells power tools via the Internet. Respondent has registered the following nine DEWALT derivative domain names between December 1999 and April 2000, with full knowledge of Complainant's prior and longstanding use of the DEWALT name and mark:
dewalt-power-tools.net
dewalt-wookworking-tools.com
dewalt-woodworking-tools.net
dewaltwoodworkingtools.org
dewaltpowertools.org
dewalt-power-tools.org
dewalt-power-tools.com
dewalt-power-tool.com
dewalt-woodworking.com
In January 2000, after being contacted by Complainant concerning the domain names, Respondent offered to transfer the DEWALT derivative domain names to Complainant in return for Complainant's agreement to provide approximately $250,000 to sponsor a modified stock car racing tour. Thereafter, Complainant, through its attorneys, sent a letter to Respondent notifying him that his registration and use of the DEWALT derivative domain names violated Complainant's rights to its registered DEWALT mark. Respondent then contacted Complainant's attorney and sent an e-mail demanding $1,000,000 for the transfer of the DEWALT derivative domain names and for unspecified aid to stop or deter others from adopting Complainant's DEWALT trademark as a principal component of their domain names.
Each of Respondent's nine DEWALT derivative domain names are confusingly similar to Complainant's famous and registered DEWALT mark in that the distinctive component of each domain name is identical to Complainant's mark. Respondent's use of these domain names in connection with terms that describe Complainant's business will likely cause consumers and members of the trade to believe that Respondent's domain names and web sites are associated or affiliated with or sponsored by Complainant.
Respondent has no right or legitimate interest in the nine DEWALT derivative domain names. Respondent registered and is using the domain names in bad faith. Respondent is well aware of Complainant's DEWALT products, the vast goodwill, favorable reputation and market-drawing power as evidenced by Respondent's offer to sell the domain names for $1,000,000. Respondent uses each of the nine domain names to automatically link to the Tools Plus homepage at tools-plus.com, where Respondent sells power and woodworking tools, including tools manufactured by Complainant Black & Decker. Respondent used and continues to use the nine domain names to identify and attract attention to his business of selling tools and to interfere with and disrupt Complainant's business operations by diverting customers from Complainant's web site and causing consumers to believe that Respondents' web site is affiliated with or sponsored by Complainant. Respondent's use is designed and calculated to cause confusion, mistake and deception of the public and trade as to the source, origin, sponsorship, approval or affiliation of Respondent with Black & Decker, and dilution of the distinctiveness and value of Black & Decker's famous DEWALT trade name and trademark.
Respondent Eric Savelle d/b/a Tools Plus, Inc. is a businessman who has been selling
tools from stores for over twenty years and on the Internet since 1999. Tools Plus has been an authorized seller of Dewalt tools for over ten years and has sold Dewalt tools on its web site since it was launched in April, 1999.
Beginning in January 2000, Respondent began to register domain names that describe the products sold on the Tools-Plus.com web site, including the disputed domain names. Those names were registered by Respondent to promote the sale of Dewalt tools to users interested in purchasing on-line.
Complainant has consented to Respondent's use of the disputed domain names because a link to Tools-Plus.com continues to appear on the Dewalt "Find a Retailer" page and Complainant continues to sell and ship goods to Respondent.
Starting in November 2000, Respondent says that he began to receive harassing phone calls from Complainant's representatives demanding that he cease using the domain names containing the word Dewalt. Respondent contends that as an authorized Dewalt retailer, he was and is entitled to use the disputed domain names to fairly describe the products sold on the Tools-Plus.com web site.
Complainant mischaracterizes the phone conversations with Respondent. Respondent did not suggest sponsoring Tools-Plus in a stock car racing tour but simply took advantage of an opportunity to discuss such sponsorship with a high level Dewalt executive. With regard to the e-mail containing the offer to sell the domain names for $1,000,000, that was in response to a cease and desist letter and was not serious but calculated to send a message to Dewalt that he was not giving in to them.
The disputed domain names are not identical or confusingly similar to Complainant's trademark and are sufficiently distinct from Complainant's Dewalt mark to not be confusingly similar.
Respondent has rights and legitimate interest in the Domain name because he has been an authorized Dewalt retailer for ten years. Respondent's sale of goods associated with the disputed domain names and authorized by Complainant establish Respondent's rights and legitimate interest.
Complainant has not demonstrated that the domain names were registered and are being used in bad faith. There is no evidence that the disputed domain names were registered for the purpose of selling them to the Complainant or any party; that they were registered to prevent Complainant from reflecting its trademark in a domain name; that they were registered to disrupt Complainant's business; or that they were registered to attract users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site. There was no intent to do any of the above at the time of the registrations and Respondent's primary purpose was for the legitimate purpose of selling products.
C. Complainant’s Additional Submissions
Complainant has written guidelines prohibiting the use by retailers of domain names containing Black & Decker's DEWALT name, and in order to remain an authorized dealer, Respondent agreed not to use any domain name containing the DEWALT name and mark. This is Complainant's Internet Retail Policy. Respondent's assertion that he made fair use of the domain names in connection with a bona fide offering of goods and services fails because said use is infringing use and cannot be fair use. Respondent may use the DEWALT mark on their web site to fairly describe the authentic DEWALT goods that they offer, however, use of the DEWALT mark as part of the domain name goes too far. Use of another's trademark, as part of one's domain name to attract customers for commercial gain does not constitute a legitimate interest.
The disputed domain names are confusingly similar to the DEWALT trademark. It is well settled that "the addition of generic terms…are not sufficient to avoid confusion." Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO, Sept. 18, 2000). Accordingly, Respondent's use of nine domain names using the DEWALT mark with a descriptive term are confusingly similar.
Respondent cannot establish legitimate interest in the DEWALT domain names by arguing that they made use of the domain names in connection with a bona fide offering of goods. Respondent may use the DEWALT mark on their web site to fairly describe the authentic DEWALT goods that they offer, however, use of the DEWALT mark, as part of a domain name is not a legitimate interest. Fair use must be non-infringing use. In addition, Respondent uses the domain names to bring consumers to a page that refers to tools made by other manufacturers.
D. Respondent’s Additional Submissions
Respondent was not provided with Complainant's Internet Retail Policy until March 7
2001, which is after the initiation of this dispute. Respondent's right to keep the disputed domains does not turn on whether they are confusingly similar because Complainant must still prove bad faith registration and use and the lack of rights and legitimate interest in the disputed domains. Respondent is not required to establish "fair use" but only that it has rights and legitimate interest, which it has done.
Respondent's sale of non-Dewalt products does not make its use of the disputed domains illegitimate for there is no requirement under UDRP that the bona fide offering of goods and services be connected exclusively to a disputed domain name.
There is no evidence that Respondent registered the disputed domain names primarily for the purpose of selling them the Complainant nor does the evidence support a finding that Respondent intended to create a likelihood of consumer confusion.
FINDINGS
It is the finding of this panel that:
1 - All nine of Respondent's domain names are identical and/or confusingly similar to Complainant's valid, Federally registered trademarks in which the Complainant has rights.
2 - That Respondent has no rights or legitimate interests in respect of the nine disputed domain names.
3 - That the Respondent registered and is using the nine disputed domain names in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant asserts that it has rights in the DEWALT mark because of its numerous registered trademarks. Complainant contends that the domain names are confusingly similar to its registered mark because the domain names simply add descriptive and generic words to Complainant’s DEWALT mark. See PG&E Corporation v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that "Respondent does not by adding the common descriptive or generic terms ‘corp.’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant"); Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names "caterpillarparts.com" and "caterpillarspares.com" were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar").
The evidence in this case establishes that the Complainant is the owner of Federal trademark registrations for DEWALT and has been using that mark to identify its goods and services since 1923. This mark has been used worldwide for Complainant's power tools, hardware and home improvement products. Complainant's DEWALT mark has become famous and is recognized and relied on by the trade and the public as identifying Complainant's goods and services.
Respondent obviously knew of the DEWALT mark prior to his decision to register the nine disputed marks because, as he says, he has been an authorized dealer for DEWALT for ten years. And, Respondent continues to use this identifying mark in its domain names to draw customers.
It is the finding of this panel that Respondent knew of Complainant's world-known mark and that he consciously selected, registered and utilized the nine disputed domain names that are identical and/or confusingly similar to Complainant's mark. Respondent clearly wants to attract customers by association with Complainant's famous name and worldwide reputation.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c) for the following reasons:
Also see numerous cases cited in Complainant’s submissions.
Under ICANN Rule 4(c) Respondent can demonstrate his rights and legitimate interest in
in one of three ways. The only one that is available to Respondent under the facts of this case is Rule 4(c)(i) which provides in substance that before any notice of the dispute, the Respondent was using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It should be noted here that Respondent is neither the owner of nor authorized user of the DEWALT mark. He has not been commonly known by that name nor is his use of the domain name for a legitimate noncommercial or fair use without intent for commercial gain.
Respondent has acknowledged that he registered and is using the nine disputed domain names for commercial gain to attract customers to his web site. It is his contention that since he is an authorized DEWALT retailer and is selling DEWALT products, he has rights and legitimate interests in the domain name. In the opinion of this panel, this constitutes classic trademark infringement. From the record in this case, one could find that Respondent was offering goods through use of the nine disputed domain sites prior to notice of this dispute. However, this panel cannot find that such offering of goods was "bona fide" as required by Rule 4(c)(i). Respondent's use of Complainant's federally registered trademark name "DEWALT" with descriptive terms of products produced by Complainant is not a "bona fide" offering of goods or services in good faith in the absence of authorization by the Complainant.
To agree with Respondent's contentions on this issue would allow any retailer or other entity dealing in products to register and use as domain names, variations of registered or unregistered trademarks or service marks of literally thousands of manufacturers of products. This panel does not believe that ICANN Policy or Rules provide for or intend such a result.
Registration and Use in Bad Faith
Respondent is using the domain name in connection with a web site that sells tools manufactured by a variety of companies. Using a domain name, to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site is evidence of bad faith registration and use. Policy ¶ 4(b)(iv). See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent automobile dealership specializing in Volkswagens to Complainant); Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb 23, 2000) (transferring FOSSILWATCH.COM from Respondent watch dealer to Complainant); Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring NOKIAS.COM from Respondent cellular phone dealer to Complainant); Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring SANDALSAGENCY.COM and SANDALSAGENT.COM from Respondent travel agency to Complainants, who operate Sandals hotels and resorts).
At the time Respondent registered the nine disputed domain names, it is clear that he was well aware of Complainant's registered trademarks and use of the DEWALT name. It is equally clear to this panel that Respondent's registration and use of the nine disputed domain names was for the purpose of attracting customers to his Tool-Plus.com web site. Based on the foregoing, this panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation and/or endorsement of Respondent's web site.
Complainant also contends that Respondent registered and used the domain names in bad faith by Respondent’s repeated offers to sell the domain names. Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000").
Although Respondent contends that his discussion regarding a $250,000 sponsorship of a stock car racing tour and his e-mail offer to sell the web sites for $1,000,000 were not offers to sell but were done for some other purpose, this panel finds that Respondent clearly recognized the significance of these domain names and attempted to profit from them in excess of his documented out-of-pocket costs. This conduct on his part is sufficient evidence of bad faith registration and use.
DECISION
It is the unanimous decision of this panel that the disputed domain names in this case, dewalt-power-tools.net, dewalt-woodworking-tools.com, dewalt-woodworking-tools.net, dewaltwoodworkingtools.org, dewaltpowertools.org, dewalt-power-tools.org, dewalt-power-tools.com, dewalt-power-tool.com, and dewalt-woodworking.com, be transferred to Complainant Black & Decker Corporation.
Honorable Daniel Banks
Chairperson of the Panel
Louis E. Condon
M. Kelly Tillery, Esq.
Dated: April 10, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/734.html