DECISION

The Black & Decker Corporation v. Clinical Evaluations

Claim Number: FA0205000112629

PARTIES

Complainant is The Black & Decker Corporation, Towson, MD (“Complainant”) represented by William G. Pecau, of Pennie & Edmonds.  Respondent is Clinical Evaluations, New York, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <blackandecker.com>, registered with Tucows, 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. The Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2002; the Forum received a hard copy of the Complaint on May 3, 2002.

On May 3, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <blackandecker.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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@blackandecker.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 June 10, 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:

The disputed domain name is confusingly similar to Complainant’s registered BLACK & DECKER mark.  Respondent has no rights or legitimate interests in respect of the disputed domain name.   Respondent registered and used the disputed domain name in bad faith.

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

FINDINGS

Complainant is a global manufacturer and marketer of power tools and accessories, hardware and home improvement products, and technology-based fastening systems used in and around the home and for commercial applications.  Complainant has been continuously engaged in the home improvement and hardware products industry under the BLACK & DECKER name since 1915.  Complainant is one of the largest manufacturers of tools and home improvement products in the world, with its products and services marketed in over 100 countries.

Complainant holds numerous registered marks in BLACK & DECKER, domestic and international, including registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) dating back as early as 1949.  Through international distribution of its BLACK & DECKER-branded products and the expenditure of hundreds of millions of dollars for advertising and promotion, Complainant’s BLACK & DECKER mark has become one of the most famous marks in the this country and abroad and has substantial and extensive goodwill.

Respondent has no known connection with the BLACK & DECKER mark aside from its registration of the <blackandecker.com> domain name currently at issue.  Respondent registered the domain name October 27, 2000.  Complainant has attempted to contact Respondent on various occasions but Respondent has ignored Complainant’s attempts and has changed the domain name’s registration name and address in response. The e-mail contact information was not changed.  Respondent has made little use of the domain name except to redirect Internet users to unrelated, mostly commercial websites, presumably to earn a commission or pay-per-click referral fee.

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 as 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BLACK & DECKER trademark through registration with the USPTO and by continuous subsequent use. 

The disputed domain name is confusingly similar to the BLACK & DECKER mark, as its plays on a highly probable typographical mistake Internet users may make as they spell out the mark while looking for Complainant’s website.

The ampersand character (&) is not reproducible in domain names.  Accordingly, trademark holders must either spell out the ampersand as the word “and” in their respective domain names or omit the symbol entirely.  Respondent’s domain name reflects the spelled-out version of Complainant’s mark.  It is likely that those who seek to access Complainant’s website, type Complainant’s name, leaving out the letter “d” rather than typing it twice. Such a minor variation does not distinguish the domain name registered by Respondent from Complainant’s mark; both look and sound almost identical.  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).

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

Rights to or Legitimate Interests

Complainant demonstrated rights to and legitimate interests in the BLACK & DECKER mark in this proceeding.  Because Respondent has not provided a Response in this matter, the Panel may presume Respondent 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).

Respondent has been using the disputed domain name for commercial gain by redirecting Internet users to commercial websites for profit.  Such use does not fall within the meaning of “legitimate noncommercial or fair use” in Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); 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).

No evidence suggests that Respondent is commonly known by “blackandecker” or <blackandecker.com> and Respondent has not come forward with any such evidence in this proceeding.  Further, within the last two years, Respondent has claimed that its name is: “Clinical Evaluations,” “American Clinic,” “American Medical,” “Vicki Taylor,” and “Patrick Henderson,” all with the same e-mail address.  Accordingly, Respondent has no rights pursuant to Policy ¶ 4(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, by redirecting Internet users seeking Complainant’s website to other unrelated commercial websites, Respondent is not making a “bona fide offering of goods or services” as contemplated by Policy ¶ 4(c)(i).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using the names to link to an advertising website).

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

Registration and Use in Bad Faith

Respondent registered the disputed domain name, which is nearly identical to Complainant’s famous mark, in order to opportunistically profit from inadvertent visits by Internet users seeking Complainant’s website.  Such behavior evidences bad faith registration and use under the Policy.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Further, the fact that Respondent has changed its registration and contact information every time Complainant attempted to contact it to resolve this matter amicably further supports a finding of bad faith.  See Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (transferring the domain name where the constant change of parties having ownership of the domain name evidenced bad faith registration and use).

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 <blackandecker.com> domain name be transferred from Respondent to Complainant.

                                                                                    Hon. Carolyn Marks Johnson, Panelist

Dated: June 24, 2002.

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