DECISION

Hardware Distributors, Ltd. d/b/a Woodworker's Hardware v. Woodworker's Supply, Inc.

Claim Number: FA0403000248947

PARTIES

Complainant is Hardware Distributors, Ltd. d/b/a Woodworker's Hardware (“Complainant”), represented by Douglas J. Frederick, of Rider Bennett, LLP, 333 South Seventh Street, Suite 2000, Minneapolis, MN 55402.  Respondent is Woodworker's Supply, Inc. (“Respondent”), represented by Sheldon H. Klein, of Arent Fox Kintner Plotkin & Kahn PLLC, 1050 Connecticut Ave. NW, Washington, DC 20036-5339.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <woodworkershardware.com>, registered with Tucows Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. James A. Carmody, Q. Todd Dickinson, Esq. and David S. Safran, Esq. (Chairman) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 23, 2004; the Forum received a hard copy of the Complaint on March 24, 2004.

On March 24, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <woodworkershardware.com> is registered with Tucows Inc., and that the 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 March 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 19, 2004 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@woodworkershardware.com by e-mail.

A timely Response was received and determined to be complete on April 19, 2004.

Timely Additional Submissions were received from each of the parties.

On May 10, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. James A. Carmody, Q. Todd Dickinson, Esq. and David S. Safran, Esq. (Chairman) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant 

Complainant alleges that it has common law rights to the trademark, WOODWORKER’S HARDWARE, developed over many years, and that Respondent has registered the domain name at issue <woodworkershardware.com> which is identical or confusingly similar to a trademark in which Complainant has rights.  Further, Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue and that it has been registered and is being used in bad faith.

B. Respondent

Respondent argues that Complainant’s mark is generic and has no capacity to identify the origin of specific goods and therefore Complainant has no right to prevent others from using the word or combination of words which comprise the mark in the domain name at issue.  Accordingly, and even if “woodworker’s hardware” is a merely descriptive phrase, and not a generic term, Respondent (a direct competitor of Complainant for goods which could correctly be described as woodworker’s hardware) has rights and legitimate interests in respect of the domain name at issue.   Finally, by virtue of its extensive business in the line of “woodworker” commerce, and by virtue of its practice of accumulation of a portfolio of domain names relating to woodworking, and for other articulated reasons, Respondent claims that it has not registered or used the domain name at issue in bad faith.  Finally, Respondent alleges that Complainant is guilty of “laches” for failure to initiate this proceeding for roughly six years following the registration of the domain name at issue.

C. Additional Submissions

Each of the parties filed Additional Submissions which essentially made or embellished the same arguments as made in the Complaint and Response, and they have been considered by the Panel for all purposes.

FINDINGS

Complainant has used the WOODWORKER’S HARDWARE mark in connection with the sale of cabinetry handles, knobs, hinges and other accessories since 1991 and has thus established common law rights in the mark based upon several exhibits provided as

evidence.  In addition, Complainant registered the WOODWORKER’S HARDWARE mark as an assumed name with the Minnesota Secretary of State in 1991 and has for many years published catalogs featuring its products entitled, “WOODWORKER’S HARDWARE.” 

There is no evidence that Respondent is commonly known as “WOODWORKER’S HARDWARE” or that Complainant has licensed Respondent to use that claimed

common law trademark.  However, there is evidence that, following active use by Respondent of the domain name at issue on a website which resolves to the domain name at issue, confusion ensued and that Internet users seeking Complainant’s goods were initially attracted or hyperlinked to Respondent’s principal website.

It appears that Respondent has a policy of registering a robust portfolio of domain names related to the woodworking business.  Notwithstanding, the addition to that portfolio of an arguably, and seemingly natural, domain such as

<woodworkershardware.com>, the undisputed facts suggest that active use of the website associated with the domain name at issue only occurred after the procurement by Respondent of Complainant’s mailing list.  Despite complaining by way of a cease and desist letter (or otherwise) in a prompt fashion after the registration of the domain name at issue, Complainant has waited six years to bring this proceeding, following being alerted by customers of their initial attraction to Respondent’s website associated with the domain name at issue.

Respondent’s argument of “laches,” in light of the six year hiatus since registration of the domain, is enticing, but the fact of its lack of use of the domain at issue to resolve to an active website, or to point to one, for several years, and the evidence of only recently reported customer confusion to Complainant vitiates the “laches” argument, at least to some extent.

           

The Panel further notes that Respondent has a robust portfolio of registered domain names (as amply described by Respondent in its Response) and that it claims no trademarks closely associated with the domain name at issue.  On the other hand, Complainant’s catalog and extensive prior use of the mark is essentially now associated with and compromised by the domain name at issue, and to deny Complainant the hyperlink or original resolution capability of a website resolving at, and verbally associated with its common law trademark, WOODWORKER’S HARDWARE, seems to be unfair and antagonistic to UDRP Policy.

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

It appears that the domain name at issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, based on a common law, as opposed to a government registered, claim of rights.  Common law rights are recognized under the UDRP.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant).

Further, state/local registration is some evidence of historical use of a mark.  See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that Complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that Complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that Complainant had sufficient standing to bring a claim under the UDRP).

The <woodworkershardware.com> domain name is identical to Complainant’s WOODWORKER’S HARDWARE mark, because the domain name fully incorporates the mark and merely omits the apostrophe and the space between the two words of the mark.  The omission of the apostrophe and space is insufficient to distinguish the domain name from Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

Furthermore, the addition of the generic top-level domain “.com” is irrelevant in determining whether the <woodworkershardware.com> domain name is identical to Complainant’s mark.  See  Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, Complainant has satisfied element one of the Policy.

Rights or Legitimate Interests

Respondent is not commonly known by the domain name.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Complainant asserts that Respondent’s <woodworkershardware.com> domain name is identical to Complainant’s mark and is used to offer goods and services that compete with those offered by Complainant.  Complainant contends that Respondent’s competitive use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services).

Accordingly, Complainant has satisfied element two of the Policy.

            Registration and Use in Bad Faith

Complainant asserts that Respondent received a product catalogue from Complainant because Respondent was on Complainant’s mailing list.  Thus, Complainant argues that Respondent had actual knowledge of Complainant’s mark.  Moreover, Complainant asserts that Respondent rented Complainant’s mailing list and therefore had actual knowledge of Complainant’s mark.  Registration of a domain name identical to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

Furthermore, Complainant contends that Respondent registered and used the <woodworkershardware.com> domain name in bad faith pursuant to Policy ¶ (b)(iii) because the domain name is identical to Complainant’s mark and resolves to Respondent’s website, which offers goods and services that compete with those offered by Complainant.  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 Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

In addition, Complainant argues that Respondent registered and used the <woodworkershardware.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name is identical to Complainant’s mark and resolves to a commercial website.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).

Moreover, Complainant avers that Respondent has registered and used the <woodworkershardware.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has registered three other domain names that infringe on third parties’ marks.  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

Accordingly, Complainant has satisfied element three of the Policy.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

David S. Safran, Esq. (Chairman), for the Panel

Q. Todd Dickinson, Panelist

Hon. James A. Carmody, Esq., Panelist

Dated: June 4, 2004

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