DECISION

Whirlpool Properties, Inc. & Whirlpool Corporation v. Ace Appliance Parts and Service

Claim Number: FA0204000109386

PARTIES

The Complainants are Whirlpool Properties, Inc and Whirlpool Corporation, St. Joseph, MI (hereafter, collectively called “Complainant”) represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd.  The Respondent is Ace Appliance Parts and Service, Bloomington, IN (“Respondent”) Vincent S. Taylor, of Vince Taylor’s Law Office.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <whirlpoolparts.com> and <kitchenaidparts.com>, registered with Network Solutions and Bulkregister.com, respectively.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 9, 2002; the Forum received a hard copy of the Complaint on April 12, 2002.

On April 11, 2002, Network Solutions and Bulkregister.com confirmed by e-mail to the Forum that the domain names <whirlpoolparts.com> and <kitchenaidparts.com> are registered with Network Solutions and Bulkregister.com, respectively, and that the Respondent is the current registrant of the names.  Network Solutions and Bulkregister.com have verified that Respondent is bound by the Network Solutions and Bulkregister.com registration agreements 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 April 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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@whirlpoolparts.com and postmaster@kitchenaidparts.com by e-mail.

A timely Response was received and determined to be complete on May 6, 2002.

On May 10, 2002, Complainant submitted a timely additional submission in accordance with Forum Supplemental Rule 7.

On May 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is Whirlpool Properties, Inc and its licensee Whirlpool Corporation.

Complainant began using its WHIRLPOOL mark in 1906 and its KITCHENAID mark through a predecessor-in interest in 1919.  Complainant has continuously and consistently used the marks in commerce since those dates of first use, making the marks famous in the United States and worldwide.

Complainant uses the marks to include a wide variety of goods and services, particularly home appliances.

In 2001, Complainant’s net sales were $10.3 billion and it spent over $44 million in advertising in the United States alone.

Complainant also uses its WHIRLPOOL and KITCHENAID marks in connection with web sites worldwide, including <whirlpool.com> and <kitchenaid.com>.  Complainant receives approximately 400,000 visits per months to its <whirlpool.com> site and approximately 325,000 visits per month to its <kitchenaid.com> web site.

Complainant owns numerous trademark and service mark registrations with the United States Patent and Trademark Office for the marks, WHIRLPOOL and KITCHENAID both alone, with design features and in conjunction with other words for use with a wide variety of goods and services.

The domain names at issue in this dispute are <whirlpoolparts.com> and <kitchenaidparts.com>.  The domain names incorporate Complainant’s famous WHIRLPOOL and KITCHENAID marks and are confusingly similar to Complainant’s famous marks.  It is likely that consumers will enter in the domain names <whirlpoolparts.com> and <kitchenaidparts.com> when they are looking for web sites regarding replacement and accessory parts for their WHIRLPOOL and KITCHENAID products.  In so doing, consumers will assume that the web sites associated with the domain names are affiliated with Complainant.

Respondent had notice of Complainant’s famous marks and selected the domain names to capitalize on the good will Complainant has established in its WHIRLPOOL and KITCHENAID marks.  Respondent is trading on that goodwill to provide goods and services for products competitive with Complainant’s products protected under the WHIRLPOOL and KITCHENAID marks.  Respondent has no legitimate rights and interests in the domain names.

Complainant received a letter from Respondent advising Complainant that it owned the disputed domain names and was placing the URLs up for sale.  Respondent advised Complainant that if it was interested in purchase of the domain names, it had until November 21, 2001 to advise Respondent of the same or the URLs would be listed with a domain name broker.

Complainant sent a cease and desist letter on November 29, 2001 objecting to its registration and use of the domain names.

In response to Complainant’s letter, Respondent alleged to be a sales dealer for Complainant and refused to transfer the domain names to Complainant.  Complainant’s counsel sent a letter to Respondent stating that even if it were a sales dealer, that dealer contracts preclude the registration of domain names incorporating Complainant’s marks.  Complainant sent another letter to Respondent again objecting to the registration and use of the disputed domain names.  Counsel for Respondent contacted counsel for Complainant and requested authority to support Complainant’s assertions.  Complainant provided several UDRP decisions. Respondent failed to respond.

Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent has been in business since 1973. 

Respondent has been selling Whirlpool and KitchenAid appliances and parts since that time.  Respondent was the only service company in its geographical area that provided warranty service for these periods for an extended period of time.

For a number of years Respondent sold parts for these appliances, with average sales of $150,000 to $200,000 per year.   Respondent regularly displayed promotional signs and posters indicating that it sold part for these appliances.

Respondent did e-mail Complainant concerning the possibility of selling the domain names involved.  However, those domain names were never obtained with the intent to resell them and have been actively used in the business of selling Whirlpool parts by the Respondent.  The domain names are nothing more that a continuation of the signs and posters previously utilized in the business location of the Respondent indicating that these items were for sale.

Respondent has an account with Complainant which continues to be active for ordering and reselling Whirlpool and KitchenAid appliances and parts.  Respondent was a Whirlpool factory authorized service center for the geographical region until the storefront business was closed in July, 2000.

The domain names are used to advertise the Respondent’s company and the products Respondent sells.  The domain names were not registered or used with the intent of confusing or misleading the general public into thinking that Respondent was the Complainant.

The domain names are known “pointers” or “parked” domain names.  When the names are typed into a browser they “point”, direct and/or link that customer to Respondent’s web site which is displayed as Ace Appliance, not Whirlpool.  The web site does not mislead someone into thinking that they have contacted Complainant.

Respondent’s intent has been to represent Whirlpool as a qualified and honorable service and parts outlet within the geographical region and the World Wide Web and not to confuse or mislead the public.

All of the foregoing was communicated to the attorney for Complainant before this litigation began.

C. Additional Submissions

Complainant’s Additional Response states that Respondent fails to acknowledge that it is not an exclusive dealer for the sale of Whirlpool and KitchenAid parts.  Complainant sells parts and services for its products and authorizes numerous other third parties to sell parts and services on it behalf.  As such, Respondent’s use of the domain names interferes with Complainant’s right to offer its parts and services and its ability to effectively authorize others to sell Whirlpool and KitchenAid parts and services on its behalf.  Respondent also fails to respond to the fact that it offers parts and services for competitors of Complainant on its web site.  Respondent has shown no contract with Complainant but even if Respondent is an authorized seller of Complainant’s parts, it is precluded from using Complainant’s famous trademarks to offer parts and services for Complainant’s products, as well as parts and services for products sold by competitors of Complainant.

FINDINGS

1. Complainant is, and has been, a major supplier of goods and services primarily associated with home appliances and other such goods since as early as 1906.

2. Complainant has operated under the marks WHIRLPOOL since 1906 and KITCHENAID since 1919.

3. Complainant owns trademark and service mark registrations with the United States Patent and Trademark Office for the marks, WHIRLPOOL and KITCHENAID, which predate the registration of the disputed domain names at issue in this case.

4. WHIRLPOOL and KITCHENAID are famous and distinctive marks.

5. Complainant spends considerable sums of money in promoting the marks in the United States and worldwide.

6. One part of Complainant’s business is to sell parts to repair or upgrade its appliances and others goods.

7. Complainant operates a web site at <whirlpool.com> that offers parts for sale to be installed in its appliances and listings of authorized suppliers of parts and services.

8. Complainant operates a web site at <Kitchenaid.com> that offers various goods and services but no specific listing for parts.

9. Both <whirlpool.com> and <kitchenaid.com> receive hundreds of thousands of Internet contacts per year.

10. Respondent is an appliance parts and services company located in Bloomington, Indiana.

11. From 1973 until 2000, Respondent operated a storefront business.  Respondent sold Whirlpool and KitchenAid appliances and parts under some manner of sales agreement, the content of which is neither supplied by Complainant nor Respondent in this proceeding, from Complainant through account numbers provided by Complainant to Respondent.  No evidence is presented that this arrangement was a grant of any exclusive right on the part of Respondent to sell Complainant’s goods in any specific geographical area or as to any particular part or parts.

12. Respondent closed its storefront operation in July of the year 2000.  The inference is drawn that Respondent’s business now operates on the Internet.

13. On January 30, 1999, Respondent registered the domain name <WHIRLPOOLPARTS.COM>.

14. On April 21, 2000, Respondent registered the domain name <KITCHENAIDPARTS.COM>.

15. The domain names were utilized by Respondent as links to direct internet customers to a web site titled “Ace Appliance” which offered “online repair”, “schedule a service call”, “appliance parts”, “express order form” and “part inquiry.”  The site states that Ace Appliance provides parts from thirty-four different appliance suppliers including Whirlpool, Sears, Admiral, Amana, GE, Hotpoint, Maytag, Magic Chef, Tappan, Kelvinator, Frigidaire, and Kitchen Aid, among others.

16. The time that these links were first used is not disclosed in the pleadings, but Complainant apparently first became aware of them on November 16, 2001, when Respondent sent an e-mail to Complainant offering to sell the domain names to Complainant or to list the domain names with a domain name broker on the global market.  No sales price was mentioned in the e-mail.

17. Complainant promptly sent a cease and desist letter to Respondent and there followed several such communications between counsel for Complainant, Respondent and counsel for Respondent.  Complainant demanded transfer of the domain names and when this was not done, filed a Complaint initiating this proceeding.

18. The domain names are confusingly similar to Complainant’s trademarks.

19. Respondent has no rights and legitimate interests in the domain names.

20. Respondent registered and used the 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 has rights in the marks, WHIRLPOOL and KITCHENAID due to its long use of the terms in commerce and its registration of them with the United States Patent and Trademark Office.  The remaining question to be answered under this point is whether the domain names registered by Respondent are confusingly similar to Complainant’s trademarks.  The domain name, <whirlpoolparts.com>, is confusingly similar to Complainant’s mark, WHIRLPOOL.  The disputed domain name is comprised of Complainant’s mark and the generic term “parts.”  Common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which the Complainant has rights. see AXA China Region Limited v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000).  see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition or an ordinary descriptive word does not detract from the overall impression of the dominant part of the name); see also Cable News Network LP, LLLP v. Ahmed Latif, FA100709 (Nat. Arb. Forum Dec. 31, 2001) (holding that the addition of the work “arabic” to complainant’s CNN trademark to create the domain name “cnnarabic.com” failed to keep the result from being confusingly similar to the trademark).  The same is true of the domain name <kitchenaidparts.com>.  The addition of the word “parts” does not detract from the overall impression of the dominant part of the domain name, to wit: KITCHENAID.  Adding the word “parts” to a mark does not eliminate confusing similarity. see EAuto, L.L.C. v. Eauto Parts, D2000-0096 (WIPO Apr. 9, 2000) (comparing EAuto and Eautoparts); see also Caterpillar Inc. v. Off Road Equipment Parts, FA95497 (Nat. Arb. Forum Oct. 10, 2000) (comparing CAT to <catparts.com>); see also Komatsu Ltd. v. RKWeb Ltd, D2000-0995 (WIPO Nov. 13, 2000) (comparing KOMATSU and <komatsu-parts.com>).  The names were chosen to make a reasonable Internet user assume that the domain name is somehow affiliated with Complainant’s famous marks. That makes them confusingly similar.  see Treeforms, Inc. v. Cayne Indus. Sales Corp, FA95856 (Nat. Arb. Forum Dec. 18, 2000).

Complainant prevails on this issue.

Rights or Legitimate Interests

Complainant bears the burden of showing that Respondent has no rights or legitimate interests in the disputed domain names.  Complainant contends that because of its continuous use of the marks in commerce for over 70 years and its trademark registrations, it has exclusive right to use the marks. see America Online, Inc. v. Tencent Communications Corp. FA93668 (Nat. Arb. Forum Mar. 21, 2000). 

Complainant contends that it never licensed or authorized Respondent to use Complainant’s marks in the domain names at issue.  Respondent makes no claim that it has ever been known as WHIRLPOOL or KITCHENAID.  Respondent has at all times been known as Ace Appliance Parts and Service.

As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain names, <whirlpoolparts.com> and <kitchenaidparts.com>, the burden must shift to Respondent to demonstrate its rights and legitimate interests in the domain names. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).

Respondent may demonstrate its rights and legitimate interests in the domain names by any of the methods set out in Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy.  No argument is made by Respondent that it is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain as permitted in Paragraph 4(c)(iii).   

Respondent contends that since it has an account with Complainant to purchase Complainant’s parts for resale to consumers, it is thereby authorized to use Complainant’s marks in the domain name for the site where such parts are made available to consumers.  The question presented is whether a bona fide offering of goods or services began before commencement of this dispute. see Paragraph 4(c)(i).

This case is much like Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).  In the Oki Data case Respondent was an authorized Oki Data repair facility which registered <okidataparts.com> thus provoking a domain name dispute wherein the holder of the trademark “OKIDATA” contended that the registration of the domain name violated its rights in the registered trademark and further that Respondent’s agreement to provide repair services contained no trademark license or authorization to use the OKIDATA mark as a domain name. The Panel concluded that to be “bona fide” the offering must meet several requirements. The first is that Respondent must actually be offering the goods and services at issue.  Next, the Respondent must use the site to sell only the trademarked goods, otherwise it could be using the trademark to bait Internet users and then switch them to other goods.  The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.  In that case, Respondent, the authorized agent of Complainant in the Oki Data case prevailed because it met all of the tests found by the Panel were required to be met.

The relationship between Complainant and Respondent in this case is not as close as the relationship in the Oki Data case. Respondent is not an authorized repair facility.  It is merely a reseller of Complainant’s goods.  But the true difficulty Respondent faces under the rationale of the Oki Data case is that Respondent sells parts for more than thirty companies who are direct competitors of the Complainant.  This is clearly displayed on Respondent’s web site where it is stated at the top of the web page “For All Brand Name Appliances.” This does not constitute a bona fide offering of goods. see Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,  D2000-1774 (WIPO Feb. 26, 2001) (holding that the use of Nikon-related domain names to sell Nikon and competitive cameras is not a legitimate use); see also Enzymatic Therapy, Inc. v. VNF Nutrition, D2001-1310 (WIPO Dec. 17, 2001) (holding that Respondent, as authorized distributor of Complainant’s goods, could not use Complainant’s registered trademark in a domain name over the objection of Complainant, even in the sale of Complainant’s goods); see also Easy Heat, Inc. v. Shelter Products, D2001-0344 ( WIPO June 14, 2001) (“Most panels addressing this issue have found that a distributor does not have the unfettered right to register a domain name incorporating the trademark of the licensor”).

Respondent shows no other justification for using Complainant’s marks in domain names other than as a reseller of parts obtained from numerous suppliers or manufacturers, of which Complainant is just one of the number.  That relationship does not prove that Respondent has rights and legitimate interests in the disputed domain names. 

Complainant prevails on this point.

Registration and Use in Bad Faith

The Uniform Domain Name Dispute Resolution Policy places the burden of proving each of the three elements upon the Complainant.  Evidence of registration and use in bad faith may be proved in any of the ways set out in Paragraph 4(b).  

Complainant contends that the e-mail received from Respondent offering to sell the domain names to Complainant proves the elements set out in Paragraph 4(b)(i).  This Paragraph requires proof of circumstances indicating that Respondent registered or acquired the domain names primarily for the purpose of selling them to Complainant or a competitor.  Complainant presents no evidence that Respondent registered the domain names for the purpose of selling them.  Respondent states that the domain names were registered to be used to sell parts on the Internet.  The evidence supports this allegation.  The elements of Paragraph 4(b)(i) stand unproved.

Complainant contends that the registration of the domain names interferes with the owner of the trademarks “rights to offer its parts and services and its ability to effectively authorize others to sell Whirlpool and KitchenAid parts and services on its behalf.  This cannot be a violation of Paragraph 4(b)(ii) since no proof is presented that Respondent has engaged in a pattern of such conduct.

No evidence is presented that the domain names were registered primarily for the purpose of disrupting the business of a competitor as set out in Paragraph 4(b)(iii).  The evidence suggests that Complainant did not even know of the registrations of the domain name <whirlpoolparts.com> for more than a year after it was registered.  No allegation or proof of actual confusion on the part of any consumer is shown in the materials presented in the case.  The elements of Paragraph 4(b)(iii) stand unproved.

 Paragraph 4(b)(iv) states that if a party by using the domain name intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site, then such conduct constitutes evidence of bad faith.  Complainant argues that Respondent is doing just that.  Respondent argues that it is simply doing what it has done for years, that is to say, selling Whirlpool and KitchenAid parts to consumers.  Respondent contends that the domain names are simply an extension of the posting of signs and advertisements in its store that announced availability of Whirlpool and KitchenAid parts for sale.  What Respondent fails to recognize is that posting signs in a store in Bloomington, Indiana, is very different from the use of domain names on the Internet.  The Internet covers the entire country.  It converts Respondent from an operator in a small area to an operator on a national scale.  This does indeed lead to a conflict between Respondent and Complainant in the sale of parts throughout the country.  It creates the situation disapproved of in Mikimoto (America) Co. v. Asanti Fine Jewellers Ltd., AF-0126 (eResolution Arp. 8, 2000) where it was found that for the Respondent distributor of Mikimoto, the Complainant, to control the disputed domain name which is identical to Complainant’s trademarks and sites that link from it, gave the Respondent, merely one of many distributors, a preferred position with respect to controlling referrals and thus placed Respondent in a unique position as to other distributors of Complainant’s products.

This is not a case where Respondent is an exclusive dealer appointed by Complainant to sell its goods and the dealer sells no competitor’s products.  In cases of that type, Panels have been reluctant to find a lack of legitimate rights and interests and bad faith when the dealer registers and uses a domain name incorporating Complainant’s trademark for the sale of Complainant’s goods. see Weber-Stephen Products Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000); ABIT Computer Corporation v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000); Columbia ParCar Corp. v. S. Brustas GmbH, D2001-0779 (WIPO Aug. 23, 2001).

But where the registrant is one of many distributors of Complainant’s products, the distributor has no right, over the objection of a trademark holder, to register and use a domain name that incorporates the trademark. see Avon Products, Inc. v. Jongsoo Lee, D2001-0272) where an “Avon Lady” located in Korea registered “avonkorea.com” for the Internet sale of Avon products.  The Panel decided the registration and use was impermissible.  In the Avon Products case, the distributor was selling only Avon products.   In this case Respondent is selling parts for a number of companies that are competitors of Complainant as well as selling Complainant’s parts. This case is somewhat similar to Nikon, Inc. v. Technilab. Inc., D2000-1774 (WIPO Feb 26, 2001).  Respondent was a camera store that distributed Nikon cameras as well as a number of competitor cameras.  The dealer registered and opened a web site under the domain name, <nikoncamera.com>. On the web site Respondent offered for sale not only Nikon cameras, but cameras of Nikon’s competitors. The dealer/respondent contended that since it was a dealer for Nikon, it was reasonable to believe that respondent was authorized to register the domain names.  The Panel found the majority view was to reject any claim by a licensee to the right to register a domain name consisting of, or containing, the licensor’s trademark and that the right to resell products does not create the right to use a mark more extensively than required to advertise and the sell the product.  The Panel found bad faith on part of Respondent.  One of the grounds was that “the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constitutes an improper use of Complainant’s marks to attract Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site.”

The Panel can see little difference between this case and the Nikon case nor can the Panel see that the results should not be the same.

It is decided that based upon all of the evidence and lack of evidence and the inferences properly drawn from the evidence, Respondent registered and used the disputed domain names in bad faith.

DECISION

                  IT IS THE DECISION OF THIS PANEL THAT THE DOMAIN NAMES, <WHIRLPOOLPARTS.COM> AND <KITCHENAIDPARTS.COM>, NOW REGISTERED TO RESPONDENT, ACE APPLIANCE PARTS AND SERVICE, BE TRANSFERRED TO COMPLAINANT, WHIRLPOOL PROPERTIES, INC. AND WHIRLPOOL CORPORATION.

Tyrus R. Atkinson, Jr., Panelist
Dated: May 24, 2002

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