DECISION

David Brown o/b/o InspectorTools.com v. Professional Equipment

Claim Number: FA0204000109757

PARTIES

Complainant is David Brown o/b/o InspectorTools.com, Ventura, CA (“Complainant”) represented by Patrick W. Fletcher, of Law Offices of Patrick W. Fletcher.  Respondent is Joseph Affrunti d/b/a Professional Equipment, Hauppauge, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <inspectortool.com>, registered with BulkRegister.com, Inc.

PANEL

On May 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.

On April 19, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <inspectortool.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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 April 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 16, 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@inspectortool.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.

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

1. Respondent’s <inspectortool.com> domain name is confusingly similar to Complainant’s INSPECTORTOOLS.COM common law trademark and corresponding domain name.

2. Respondent has no rights or legitimate interests in respect of <inspectortool.com>.

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

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is the registered owner of the domain name <inspectortools.com> and asserts common law trademark rights in the INSPECTORTOOLS.COM mark. Complainant has been using said mark in commerce for computerized on-line retail services offering tools and related products continuously since January 13, 2000. In addition, Complainant has conducted extensive advertising through printed media, search engines and trade shows in an effort to establish the INSPECTORTOOLS.COM mark as distinctive among the public. Application serial number 78/110333 for federal registration of Complainant’s mark is currently pending before the U.S. Patent and Trademark Office.

Respondent registered the disputed domain name <inspectortool.com> on January 22, 2002 and has used it to redirect Internet users to a competing website, <professionalequipment.com>, which offers tools and related products identical to those offered by 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 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 asserts common law trademark rights in INSPECTORTOOLS.COM. Because Respondent failed to submit a Response in this proceeding and Complainant’s assertion proceeds unopposed, the Panel will accept the assertion as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

The ICANN Policy is broad in scope; unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Respondent’s <inspectortool.com> domain name is confusingly similar to Complainant’s mark because the deletion of a letter is inconsequential when conducting a confusingly similar analysis. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant).

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

Rights or Legitimate Interests

Complainant has established its rights to and interests in the INSPECTORTOOLS.COM mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or 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).

By infringing on Complainant’s common law trademark and redirecting unsuspecting Internet users to a website devoted to competing with Complainant, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merchant, 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 Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

Additionally, no evidence before the Panel suggests that Respondent is commonly known as “inspectortool” or <inspectortool.com> pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel as Joseph Affrunti d/b/a Professional Equipment.  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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Respondent registered and acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the common law trademark. Specifically, Respondent has offered to refrain from using the <inspectortool.com> domain name if Complainant refrains from using the term “Professional Equipment” in its advertising; Respondent claims it owns trademark rights in the term. Respondent’s quid pro quo behavior evidences bad faith under Policy ¶ 4(b)(i). See Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent); see also Crédit Lyonnais v. Ass'n. Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent agreed to transfer the domain name if the Complainant agreed to support the Respondent’s cause but then remained silent in completing the transfer); see generally Pocatello Idaho Auditorium Dist. v. CES Marketing 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.").

Given that both Complainant and Respondent are involved in the sale of tools and related products, it is reasonable to infer that Respondent registered and used the contested domain name in order to disrupt Complainant’s business. This demonstrates bad faith under Policy ¶ 4(b)(iii). See 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); see also 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).

Furthermore, Respondent registered and used the disputed domain name, which is confusingly similar to Complainant’s mark, in order to divert Internet users searching for Complainant’s products to a competing website. Respondent’s registration and use of Complainant’s mark represents a deliberate attempt to benefit from a perceived affiliation with Complainant’s products; thus, indicating bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

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 <inspectortool.com> domain name be TRANSFERRED from Respondent to Complainant.

James P. Buchele, Panelist

Dated:  May 31, 2002

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