DECISION

American Tool & Machining, Inc. v. EZ Hitch Inc.

Claim Number: FA0205000113961

PARTIES

Complainant is American Tool & Machining, Inc., Searcy, AR (“Complainant”) represented by Jeffrey D. Myers, of Peacock, Myers & Adams, P.C.  Respondent is EZ Hitch Inc., Sandy, UT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ezhitch.com>, registered with Verisign - Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 10, 2002; the Forum received a hard copy of the Complaint on May 13, 2002.

On May 15, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ezhitch.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. verified that Respondent is bound by the Verisign - Network Solutions, Inc. 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 May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2002, 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@ezhitch.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Respondent’s registered <ezhitch.com> domain name is confusingly similar to Complainant’s registered EZ-HITCH mark.

2. Respondent has no rights or legitimate interests in the <ezhitch.com> domain name.

3. Respondent registered and used the <ezhitch.com> domain name in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant is the owner of the EZ-HITCH trademark in the State of Arkansas, specifically Reg. No. 2204, registered March 12, 2002, with first use in commerce March 9, 2000. Complainant’s EZ-HITCH mark is for trailer hitches, hitch bases, guide plates and balls. Complainant has also operated its business from the <ez-hitch.com> domain name since February 15, 2000.

Respondent registered the disputed domain name September 6, 2001, after having been shipped two of Complainant’s EZ-Hitch products on June 13, 2001. Respondent now sells competing products via use of the <ezhitch.com> domain name. Respondent’s website advertises “The Original! EZ Hitch,” and promotes the sale of a product similar to Complainant’s in shape, form and purpose. Respondent also offered to sell the domain name for $100,000 on March 1, 2002 in an e-mail message conveyed to Complainant.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 established in this proceeding that it has rights in the EZ-HITCH mark, both through registration in the State of Arkansas and by subsequent continuous use.

Respondent’s <ezhitch.com> domain name is confusingly similar to Complainant’s EZ-HITCH mark. Deletion of a hyphen fails to detract from the overall impression of the domain name. The absence of punctuation marks, such as hyphens, are inconsequential to a “confusingly similar” analysis under Policy ¶ 4(a)(i). See Chernow Comms. Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant’s investigation and documentation show that Respondent intended to divert Complainant’s customers to Respondent’s website. Respondent has attempted to trade opportunistically on Complainant’s established goodwill in the industry by emulating Complainant’s mark and product when registering a confusingly similar domain name. Respondent’s actions of expropriating Complainant’s mark and business are not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor do they represent legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Additionally, Respondent lacks legitimate rights and interests for two other reasons. Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant’s product and under the same name. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use). Complainant provided uncontested evidence in this proceeding indicating that Respondent offered on March 1, 2002, to sell the domain name for $100,000, an amount that, on its face, exceeds the reasonable costs and expenses of registering the domain name.  Respondent’s offer to sell the domain name permits the inference that Respondent lacks rights and legitimate interests in the domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling it).

Complainant maintains, and the Panel accepts as true, that Respondent is not a licensee or authorized agent of Complainant. Respondent has not provided any documented evidence that it holds valid title, interests or right to the EZ HITCH mark. Therefore, Respondent fails in satisfying Policy ¶ 4(c)(ii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with Complainant’s trademark claims); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant provides evidence of a communication in which Respondent makes an offer to sell the disputed domain name for $100,000, far exceeding the out-of-pocket expenses incurred because of registration. Respondent’s intent and offer to sell the contested domain name for an amount in excess of reasonable cost of registration permits the finding of bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

Respondent registered and used the disputed domain name in bad faith in violation of Policy ¶ 4(b)(iii), thereby disrupting Complainant’s business. After having ordered two of Complainant’s EZ-Hitches, Respondent entered the identical industry as Complainant and has attempted to sell Complainant’s product, albeit with the slightest of variations. See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Furthermore, Respondent registered a confusingly similar domain name in an attempt to attract away Complainant’s customers. Only a very savvy consumer could discern the difference between Complainant’s EZ-HITCH mark and corresponding website and Respondent’s alleged EZ HITCH mark and <ezhitch.com> website. Further, Respondent is openly using the domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark. Respondent’s behavior evidences bad faith use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also  State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <ezhitch.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 16, 2002.

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