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Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery [2005] GENDND 152 (24 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery

Case No. D2004-1060

1. The Parties

The Complainant is Rada Mfg. Co. of Waverly, Iowa, United States of America represented by Bruce W. McKee of McKee, Voorhees & Sease P.L.C, United States of America.

The Respondent is J. Mark Press a/k/a J. Mark Cutlery of Boynton Beach, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <radacutlerysales.com>, <radaknives.com>, and <sellradacutlery.com> (the “Domain Names”). The registrar of the Domain Names is Intercosmos Media Group d/b/a DirectNIC (“DirectNIC”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2004. On December 15, 2004, the Center sent DirectNIC a request for registrar verification in connection with the Domain Names, and received DirectNIC’s confirmation that Respondent is listed as the registrant of the Domain Names and providing Respondent’s contact information. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 22, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 11, 2004. The Response was timely filed.

On January 7, 2005, Complainant submitted a Supplemental Submission for consideration by the Panel.

The Center appointed David M. Kelly as the sole panelist in this matter on February 10, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant sells kitchen cutlery, including knives, under the marks RADA and RADA Mfg. Co. Complainant has used its RADA mark for more than 30 years. Complainant owns U.S. Registration No. 2,206,697 for the mark RADA, which was first used in 1974, filed on June 6, 1997, and issued on December 1, 1998. Complainant also owns U.S. Registration No. 2,206,697 for the mark RADA Mfg. Co. and Design, which was first used in 1990, filed on June 6, 1997, and issued on December 1, 1998. Complainant’s registrations both cover kitchen cutlery, kitchen utensils, and outdoor cutlery in International Class 8.

Complainant sells its products to fundraising groups, resellers, and through private labeling. At one time, Respondent was a reseller of Complainant’s products. Complainant has since stopped providing its products to Respondent. Respondent is currently an unauthorized reseller of RADA knives, and is not authorized to use Complainant’s RADA mark.

Respondent uses the Domain Names for websites selling RADA knives as well as the products of Complainant’s competitors. The Domain Names were registered in 2001, 1999 and 2002, respectively.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the Domain Names are confusingly similar to its RADA and RADA Mfg. Co. marks.

Complainant alleges that Respondent does not have any legitimate interest in the Domain Names because Respondent uses the Domain Names to sell competing products.

Complainant alleges that Respondent registered and uses the Domain Names in bad faith to intentionally attract Internet users to its commercial website by its unauthorized use of Complainant’s RADA mark, and that Respondent’s registration of three (3) Domain Names constitutes a pattern of bad faith.

B. Respondent

Respondent claims that it has a legitimate interest in the Domain Names because it has sold RADA cutlery since 1994 and its use of the RADA mark therefore constitutes fair use.

Respondent requests that a finding of reverse domain name hijacking be made.

6. Discussion and Findings

Preliminarily, the Panel has accepted and reviewed Complainant’s additional submission, which did not add substantively to the arguments put forth in the Complaint. Accordingly, the Panel bases this Decision on the Complaint and the Response.

Paragraph 4(a) of the UDRP directs that the complainant must prove each of the following: (A) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (B) that the respondent has no rights or legitimate interests in respect of the domain name; and (C) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Domain Names are confusingly similar to Complainant’s RADA mark because each Domain Name incorporates that mark in its entirety and because the addition of the descriptive and/or generic words “knives,” “cutlery sales,” and “sell…cutlery” in the Domain Names does not sufficiently distinguish them from Complainant’s RADA mark. UDRP Panels have routinely held that the addition of a generic term to a mark in a domain name does not distinguish the domain name from that mark. See, e.g., Disney Enterprises, Inc. v. Lorna Kang (NAF FA0209000125375) (finding the domain name <disneylandhotel.com> confusingly similar to Disney’s marks DISNEY and DISNEYLAND despite respondent’s addition of the word “hotel”); Yahoo! Inc. v. Manage Technical (NAF FA0402000238649) (finding the domain name <yahooauto.com> confusingly similar to complainant's YAHOO! Mark because "Under the Policy, the incorporation of a third-party’s registered trademark in a domain name, combined with a generic or descriptive term, fails to eliminate the confusing similarity between a name and mark.”).

The Panel also finds the Domain Names confusingly similar to Complainant’s RADA mark because the descriptive words “knives,” “cutlery sales,” and “sell…cutlery” relate to Complainant’s business. See Caterpillar Inc. v. Roam the Planet, Ltd. (WIPO Case No. D2000-0275) (finding the domain name <catmachines.com> confusingly similar to the complainant’s mark CAT and noting “the addition of the word ‘machines’ as a suffix to the word ‘cat’ in the domain name under consideration does not serve to distinguish the domain name from the trademark CAT, but rather would reinforce the association of the [c]omplainant’s trademark with its primary line of products.”); XO Communications Inc. v. Registrant info@fashionid.com 9876543210 (NAF FA0212000137676) (finding the domain name <xocommunications.com> confusingly similar to the complainant’s registered mark XO and holding the addition of a term that describes the complainant’s business does not distinguish the domain name from the complainant’s mark).

B. Rights or Legitimate Interests

Under the UDRP, the respondent’s rights or legitimate interests to a domain name are established by demonstrating any of the following three conditions: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that Respondent’s registration and use of the Domain Names for websites selling both Complainant’s products and directly competing products does not constitute a bona fide offering of goods pursuant to Section 4(c)(i) of the Policy. See Compaq Information Technologies Group, L.P. v. Express Technology, Inc. (NAF FA0201000104186) (holding use of the disputed domain name to sell competing products does not constitute a bona fide offering of goods and services)Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis (NAF FA0107000098249) (finding respondent’s use of the domain name to offer competing services in the same general field as complainant cannot constitute a bona fide offering of goods and services under the Policy).

The Panel further finds no evidence that Respondent has been commonly known as the Domain Names, and that Respondent is not making legitimate noncommercial or fair use of the Domain Names.

Respondent’s use of the Domain Names to offer RADA-branded products does not demonstrate Respondent’s legitimate interest in the Domain Names. UDRP Panels have held that resellers of trademarked goods have no right to register and use domain names containing the trademark, even when the trademark is combined with generic or descriptive terms. See, e.g., Xerox Corporation v. Imaging Solution (WIPO D2001-0313) (holding respondent, a reseller of XEROX products, does not have a legitimate interest in the domain name <xeroxdealers.com>); Nikon, Inc. and Nikon Corporation v. Technilab, Inc. (WIPO Case No. D2000-1774) (a licensee or reseller of trademarked products does not have the right to use the NIKON mark in the domain names <nikondealer.com>, <nikoncamera.com>, <nikonf.com>, and <nikonf5.com>); The Stanley Works v. Camp Creek Co., Inc. (WIPO Case No. D2000-0113) (holding that "the collateral trademark use necessary to allow resale of [c]omplainant's products is not enough to give [r]espondent proprietary rights in [c]omplainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names" including <bostitchnails.com> and <bostitchtools.com>); Gorstew Ltd. v. Twinsburg Travel (NAF FA0009000095424) (despite the fact that respondent was permissibly selling complainant's vacation packages, it did not have any interest or right to register the domain name <beachesresorts.com>).

Moreover, UDRP Panels have consistently held that activities such as Respondent’s in this case, namely, use of a trademark-related domain name to sell competing goods, do not constitute a legitimate interest in the domain name at issue. See, e.g., Yahoo! Inc. v. Dkal (NAF FA0402000238650) (“[r]espondent’s <yahooautos.com> domain name is confusingly similar to [c]omplainant’s YAHOO! mark and is used to offer goods and services that compete with [c]omplainant. [r]espondent’s competitive use of the infringing domain name does not constitute 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).").

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Section 4(b)(iv) of the Policy. Respondent clearly knew of the Complainant’s mark at the time of registration. Although Respondent was a reseller of Complainant’s products at the time of registration, the Complainant granted no permission or right to register a domain name containing Complainant’s trademarks. Moreover, Respondent registered and uses the Domain Names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant and its RADA mark as to the source, sponsorship, and/or affiliation with Respondent’s websites and the competing goods offered on Respondent’s website. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong (WIPO Case No. D2003-0408) (holding respondent’s use of the domain name for a commercial website selling competing products constituted bad faith pursuant to Section 4(b)(iv) of the Policy); Compaq Information Technologies Group, L.P. v. Scott Jones (NAF FA0108000099091) (finding bad faith in respondent’s commercial use of the disputed domain name to advertise competing products); H-D Michigan, Inc. v. TT&R et al. (NAF FA0209000126650) (“In redirecting its <harleydavidsonsrus.com> domain name to its motorcycle sales website at <motorcycles-r-us.com>, Respondent used [c]omplainant’s mark to attract motorcycle buyers to its own website and created a strong likelihood of confusion as to whether [r]espondent had any affiliation with [c]omplainant. These actions violate Policy ¶ 4(b)(iv).”).

In light of the Panel’s finding of bad faith pursuant to Policy Paragraph 4(b)(iv), the Panel need not consider Complainant’s additional allegations of bad faith.

Because the Panel has found in favor of Complainant, the Panel denies Respondent’s request for a finding of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <radacutlerysales.com>, <radaknives.com>, and <sellradacutlery.com> be transferred to Complainant Rada Mfg. Co.

David M. Kelly
Sole Panelist

Date: February 24, 2005