DECISION

Peter Wolters of America, Inc. v. Teodoro Marena

Claim Number: FA0201000104124

PARTIES

Complainant is Peter Wolters of America, Inc., Plainville, MA (“Complainant”) represented by Jaren D. Wilcoxson, of Goodwin Procter LLP.  Respondent is Teodoro Marena, East Hartford, CT (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

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.

 James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 28, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.

On February 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <peterwolters.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the 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 February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 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@peterwolters.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 March 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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

<peterwolters.com> is identical to Complainant’s PETER WOLTERS trademark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

No formal Response was received, but Respondent submited correspondence indicating that it is willing to comply with Complainant’s request to transfer the disputed domain name.

FINDINGS

Complainant is a manufacturer and seller of precision abrasive machining systems, both in the United States and throughout the world.  Complainant has been operating continuously under the PETER WOLTERS name since 1804 selling carding sets, tools, auxiliary equipment for the textiles industry, as well as precision abrasive machining systems.

Complainant advertises its “consumables,” materials for use in connection with precision machining systems, as well as its other products and machines at numerous trade shows and journals throughout the world.  Since 1997, Complainant has promoted its business at <peter-wolters.com>.  Due to its aggressive marketing and advertising, the PETER WOLTERS name has become well known throughout the world.

Respondent registered the disputed domain name on February 12, 2001.  Respondent is in the business of manufacturing and selling consumable materials, including lapping plates (which are the same as Complainant’s work piece carriers) that can be used as substitute parts for Complainant’s “consumables.”  Respondent is therefore, a direct competitor.  Respondent’s <peterwolters.com> domain name initially projected the title “ Welcome to peterwolters.com”, and contained a link to Respondent’s own website.  After receiving a cease and desist letter from Complainant, Respondent changed the title to “Welcome to Marena Industries,” and added a disclaimer indicating that Respondent and Complainant are not affiliated.  Finally, in a letter dated February 13, 2002 Respondent indicated that it would be willing to transfer the disputed domain name to Complainant and that it had allowed the registration to lapse.

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 the 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 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; and

(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 has common law rights to the PETER WOLTERS mark due to its continuous use of the mark since 1804.

Respondent’s <peterwolters.com> domain name is identical to Complainant’s website because it incoporates the mark in its entirety, merely adding the “.com” top-level domain name.  See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

         

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

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this proceeding, Respondent is presumed to have 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).

Respondent’s attempt to divert Complainant’s customers to its competing website by using a domain name identical to Complainant’s mark, and placing “Welcome to Peter Wolters.com” on the title page indicates that it was not making a bona fide offering of goods pursuant to Policy ¶ (c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also North 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); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Respondent, known as Marena Industries, is not commonly known by the disputed domain name or the PETER WOLTERS mark as demonstrated by the fact that Respondent’s <peterwolters.com> was linked to “Marena Industries”, and by the disclaimer admitting that Respondent is not affiliated with the PETER WOLTERS name.  As a result, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ (c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

Finally, Respondent’s willingness to transfer the disputed domain name to Complainant following the commencement of these proceedings, is evidence that it has no rights or legitimate interests in the disputed domain name.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question)

 

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

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain name to divert Complainant’s customers, and ultimately sales, to Respondent’s domain name by creating Internet user confusion indicates bad faith registration and use.  See Surface Protection 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); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Respondent’s use of the infringing domain name to link to Respondent’s own website is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent); see also Drs. Foster & Smith, Inc. v. Jaspreet 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 website for commercial gain).

           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 shall be hereby granted.

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

James A. Carmody, Esq., Panelist

Dated: March 11, 2002

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