DECISION

Stanley Logistics, Inc. v. Motherboards.com

Claim Number: FA0210000128068

PARTIES

Complainant is Stanley Logistics, Inc., New Britain, CT (“Complainant”) represented by Jennifer L. Myron, of Arent Fox Kintner Plotkin & Kahn PLLC.  Respondent is Motherboards.com, College Station, TX (“Respondent”) represented by W. Joe Mize, of Robichaux, Mize & Wadsack, LLC.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bostitch.com>, registered with Enom.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 11, 2002; the Forum received a hard copy of the Complaint on October 15, 2002.

On October 15, 2002, Enom confirmed by e-mail to the Forum that the domain name <bostitch.com> is registered with Enom and that the Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom 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 October 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 5, 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@bostitch.com by e-mail.

A timely Response was received and determined to be complete on October 30, 2002.

Complainant filed a timely Additional Submission on November 4, 2002.

On November 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant Stanley Logistics, Inc. has registered the trademark BOSTITCH with the United States Patent and Trademark Office as follows:

BOSTICH, U.S. Reg. No. 0135920, in International Class 7, used in connection with wire stitching and stapling machines and parts thereof, since at least as early as November 1919.

BOSTITCH, U.S. Reg. No. 0226587, in International class 6, used in connection with staples for tacking, stitching and binding, since at least as early as July 1923.

BOSTITCH, U.S. Reg. No. 0836565, in International Class 6, used in connection with metal connector plate used in building construction, since at least as early as June 1965.

BOSTITCH, U.S. Reg. No. 0857786, in International Class 6, used in connection with nails and staples for tacking, stitching and binding, and metal connector plates, and in International Class 7, used in connection with wire stitching and stapling machines, staple removers, and nailing machines, since at least as early as November 1919.

BOSTITCH, U.S. Reg. No. 0992801, in International Class 7, used in connection with wire stitching, stapling, and tacking machines, since at least as early as November 1919.

BOSTITCH, U.S. Reg. No. 1252725, in International Class 7, used in connection with air compressors, since at least as early as 1961, and in International Class 16, used in connection with pencil sharpeners, since at least as early as November 1980.

BOSTITCH, U.S. Reg. No. 1280252, in International Class 7, used in connection with numbering machines, since at least as early as July 1964.

BOSTITCH, U.S. Reg. No. 1459822, in International Class 6, used in connection with metal cash boxes with locks, since at least as early as February 1984.

BOSTITCH, U.S. Reg. No. 1857473, in International Class 6, used in connection with metal stitching wire, since at least as early as July 1935, in International Class 7, used in connection with pneumatic screw mailers; air-operated hog ring tools; air-operated carton top closers; air-operated carton sealers; strapping machines; hot melt adhesive guns, since at least as early as April 1985, and in International Class 16, used in connection with office requisites; namely, staplers, rotary and tray files, stretch film and applicators for packaging, since at least as early as 1910.

2. Complainant, Stanley Logistics, Inc. (“Stanley”) is one of the world’s leading manufacturers and marketers of tools, hardware and specialty hardware products for home improvement, consumer, industrial and professional use.  The BOSTITCH mark has become famous and is identified by consumers as the source of high-quality tools.

3. Respondent registered the disputed domain name <bostitch.com>, which is identical to Complainant’s famous BOSTITCH mark, on or about February 8, 1999.

4. When an Internet user enters the domain name <bostitch.com>, the user’s web browser is automatically redirected to Amazon.com’s Stanley BOSTITCH “Brand” page.  Respondent registered the <bostitch.com> domain name with Amazon.com’s Associate program, which allows Associates to link to the <amazon.com> website and earn up to 15% in referral fees.

5. Cease and desist letters were sent to Respondent on August 11, August 21, and September 6, 2002.

6. In a letter dated September 11, 2002, Complainant offered to pay $100.00 to reimburse Respondent for registration fees in exchange for transfer of the disputed domain name.

7. Respondent replied to counsel’s offer by refusing to transfer the domain name for $100.00, and admitting that it currently earns approximately $300.00 every month by using the domain name to profit from Complainant’s mark.

8. Respondent’s unauthorized, commercial use of the domain name as a link to <amazon.com> and as an Amazon.com Associate site amounts to bad faith registration and use.

9. Respondent’s registration and use of the disputed domain name creates a false impression that Complainant is affiliated with Respondent.  This misuse by Respondent of another company’s trademark is evidence of bad faith intent to profit from Complainant’s well-known BOSTITCH mark.

10. Respondent refuses to transfer the name to Complainant unless he receives monetary compensation far in excess of the out-of-pocket costs related to registration of the domain name.

11. Respondent registered and uses the disputed domain name in bad faith, and has no rights or legitimate interest in the disputed domain name.  Respondent cannot, in good faith, claim that he or his goods or services are commonly known by the name BOSTITCH.  Additionally, Respondent is not making any legitimate, noncommercial or fair use of the domain name, but rather, registered the disputed domain name solely to trade upon and profit from the goodwill created in Complainant’s BOSTITCH mark.

B. Respondent

1. Respondent does not contend that the disputed domain name is not identical to Complainant’s registered marks.

2. Paragraph 4(c) of the Policy provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated by proof of:

(i) before any notice to you of the dispute, your use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

Prior to notice to Respondent, it used the name in a bona fide offering of goods or services.  When the URL is entered, the Internet user is directed to the Stanley/Bostitch section of the <amazon.com> site where Complainant’s tools are openly displayed for sale.  Respondent merely receives a commission for each sale that is made as a result of a hit using the <bostitch.com> domain name.  Respondent set up this arrangement in May of 2001.  Since that time, thousands of dollars of Complainant’s tools have been sold and it has reaped the benefit of this arrangement.  As a reseller of Bostitch products manufactured by Stanley, Respondent asserts that it has a legitimate interest in the Internet domain name <bostitch.com>.

Complainant has lost no sales.  If anything, logic dictates that Complainant’s sales have increased as a result of  <motherboards.com> directing the name to <amazon.com>.

3. Respondent submits that this matter and the Weber-Stephens Prods. Co. v. Armitage Hardware, D2000-0197 (WIPO May 11, 2000) proceeding are factually and legally identical.  In that case, the Complainant was the owner of several U.S. Trademark Registrations for several variations of the mark WEBER and the manufacturer of “Weber” grills and related products and services.  Respondent was the owner of a hardware store which owned or operated websites under the domain name <weber.com> and several variations.  It used its websites to promote the sale of Weber’s products.  In ruling in favor of the Respondent, the Panel held as follows:

This Panel is satisfied that Respondent has presented sufficient evidence to prove that it has used the domain name in connection with the bona fide offering of Complainant’s goods or services.  It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark. . . .

This Panel concludes that Complainant has failed to prove that Respondent’s registration and use of the domain names was in ‘bad faith.’

In the instant matter, as in Weber, the evidence is overwhelming that Respondent is not trying to confuse the public, it is selling Complainant’s goods under Complainant’s trademark.

            4.         Respondent did not register the disputed domain name in bad faith.

a. The name was not registered to sell to Complainant.

b. Respondent did not register the disputed domain name to prevent Complainant from using it.  The disputed domain name was available from 1996 until February 1999.

c. The disputed domain name was not registered to disrupt Complainant’s business or that of a competitor.

d. Complainant has not shown that by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on your website or location.

Complainant asserts that Respondent is making $300.00 per month and is thus profiting from Complainant’s mark.  This is not bad faith, rather it is a legitimate offering of Complainant’s goods.  See Weber-Stephen Prods. Co. v. Armitage Hardware, D2000-0817 (WIPO May 11, 2000); ABIT Computer Corp. v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000); Columbia ParCar Corp. v. S. Brustas GmbH, D2001-0779 (WIPO Aug. 23, 2001).

e. Respondent’s registration and use of the domain name does not create a false impression that Complainant is affiliated with Respondent.  A mere cursory review of the <amazon.com> website reveals that it does not create a false impression that there is affiliation.  There is no confusion created when the website at <bostitch.com> is accessed.  There is no reference to Respondent’s name at the site.  Complainant’s tools are openly displayed for sale as they are on many other sites on the web.  Further, Complainant has submitted no proof of any confusion from any consumer.  Respondent’s use of the domain name is consistent with the ordinary use by a retailer of a manufacturer’s trademark in connection with the sale of that manufacturer’s genuine goods.

C. Additional Submission by Complainant

1. The Weber decision is distinguished because it was largely influenced by the following determinative factors:  (1) respondent, a hardware store, was an authorized reseller of WEBER products; (2) respondent’s website was approved several times over a period of time by the trademark owner/complainant; and (3) respondent was duly licensed to use the WEBER trademark in connection with its advertising and sales of the complainant’s products.

2. In contrast to Weber, Respondent in this matter is not an authorized Stanley reseller, for any of Stanley’s products, including BOSTITCH-branded goods.  The only way that Respondent is a “reseller” is through his use of the BOSTITCH mark in connection with the domain name at issue.

3. Respondent’s registration and use of the disputed domain name creates a false impression that Complainant is affiliated with Respondent.  This misuse is exacerbated by the fact that Respondent has failed to use the disputed domain name to create and/or design a legitimate, non-commercial site and has failed to demonstrate that it uses the disputed domain name in connection with a bona fide offering of goods or services.  Complainant submits that a mere redirect to the <amazon.com> site is not sufficient to demonstrate a bona fide use of the disputed domain name in connection with the legitimate offering of Stanley products for sale.  Respondent is not in the business of selling hardware products, and cannot, in good faith, claim that its goods or services are commonly known by the name BOSTITCH.

FINDINGS AND CONCLUSIONS

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

It is conceded that the disputed domain name is identical and confusingly similar to Complainant’s famous and distinctive marks, and the Panelist so finds and concludes.

Rights or Legitimate Interests

It does appear and it is found that Respondent entered into an arrangement with Amazon in May 2001, providing that when the disputed domain name (i.e., <bostitch.com>) is entered, the Internet user will be directed to the Stanley/Bostitch section of the <amazon.com> website where Complainant’s tools are displayed for sale.  For each sale using the disputed domain name, Respondent receives a commission.

Respondent contends that it has rights and a legitimate interest in the disputed domain name because before any notice to him of the dispute (i.e., August 2002), he was using the disputed domain name in connection with the bona fide offering of goods (i.e., May 2001), thus falling within the protection of Policy ¶ 4(c)(i).

The rub, however, is the phrase “bona fide,” which is defined in Webster’s Ninth Collegiate Dictionary (1984) at page 166, as “made in good faith and without fraud or deceit.”

If the registration and use of the disputed domain name were not in good faith, it must follow that Respondent does not have rights or a legitimate interest in the disputed domain name.

The Panel must, accordingly, turn to the issue of registration and use in bad faith.

Registration and Use in Bad Faith

Respondent contends that, with respect to the bad faith issue, he falls within the ambit of such decisions as Weber-Stephen Prods. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000); ABIT Computer Corp. v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000); and Columbia ParCar Corp. v. Brustas GmbH, D20001-0779 (WIPO Aug. 23, 2001), where Panels were reluctant to find a lack of legitimate rights and interest and bad faith when the dealer registers and uses a domain name incorporating Complainant’s trademark for the sale of Complainant’s goods.[1]

Complainant asserts, however, that in each of these cases there was involved an inclusive and authorized dealer, who, with the knowledge and consent of the trademark owner, used the trademark for the promotion of Complainant’s product.  Respondent here, Complainant asserts, has never been an authorized dealer, and is using the mark deceptively and commercially without Complainant’s permission.

The Panel believes that there is a more pertinent reason as to why the disputed domain name was registered and is being used in bad faith.

The Panelist knows that when the domain name <stanley.bostitch.com> is entered and is followed by a click of “Where to Buy,” there are displayed the domain names of retailers, to wit, <amigos.com>, <grainger.com>, <doitbest.com>, <sears.com>, <thehomedepot.com>, and <lowes.com> as Internet vendors.

If, on the other hand, the disputed domain name <bostitch.com> is entered, only the retailer Amazon appears as an Internet vendor.

It follows, and the Panel finds, that Respondent through the use of the disputed domain name combined with its agreement with Amazon, has placed itself, without the consent of Complainant, in a preferred position with respect to other distributors and which can cause consumer confusion.  See, to this effect, Mikimoto (America) co. v. Asanti Fine Jewellers, Ltd. AF-0126 (eResolution April 8, 2000).

It is the conclusion of the Panel, accordingly, that Respondent registered and is using the disputed domain name in bad faith falling specifically within Paragraph 4(b)(iv) of the Policy, which , without limitation, defines “bad faith” as follows:

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It is found and concluded that Respondent has no legitimate interest or rights to the disputed domain name, and did register and is using the disputed domain name in bad faith.

DECISION

Based on the above findings and conclusions, and pursuant to Policy ¶ 4(i), it is decided that the domain name <bostitch.com> be and the same is ordered TRANSFERRED to Complainant Stanley Logistics, Inc.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  December 2, 2002

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