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Coilhose Pneumatics, Inc., d/b/a/ Freelin-Wade Company v. Don Jones [2005] GENDND 243 (17 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coilhose Pneumatics, Inc., d/b/a/ Freelin-Wade Company v. Don Jones

Case No. D2005-0006

1. The Parties

The Complainant is Coilhose Pneumatics, Inc., d/b/a Freelin-Wade Company, represented by Leonard D. Duboff, The DuBoff Law Group, LLC, United States of America.

The Respondent is Don Jones, Plano, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <flexeel.com> (the “Domain Name”) is registered with GoDaddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on January 3, 2005, and in hard copy on January 6, 2005. On January 5, 2005, the Center transmitted by email to GoDaddy Software, Inc. a request for registrar verification in connection with the Domain Name. On the same day, GoDaddy Software, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 January 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for filing a response was January 30, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on February 1, 2005.

The Center appointed Jeffrey H. Kaufman as the Sole Panelist in this matter on March 3, 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 is Coilhose Pneumatics, Inc., d/b/a Freelin-Wade Company, a New Jersey Corporation with a principal place of business in Oregon.

The U.S. Patent and Trademark Office’s (“USPTO”) Trademark Applications and Registrations Retrieval (TARR) system’s record shows that Complainant owns U.S. Trademark Registration No. 2,097,112 for the mark FLEXEEL for “inner-braided polyurethane self-storing air hose used primarily for air tools and pneumatics”. The mark was first used in commerce in 1995, registered in 1997, and that Section 8 and 15 affidavits have been filed.

Respondent is an individual, Don Jones, of Plano, Texas. Respondent registered the Domain Name on April 11, 2004.

The web address “http://flexeel.com” resolves to the website AirHoseSupply.com, which offers for sale air hoses and compressed air-line accessories, among other things.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it began using the FLEXEEL mark in commerce in 1995 and has used it continuously ever since in its business of manufacturing tubing products. Complainant uses the FLEXEEL mark in conjunction with a line of reinforced polyurethane hose. Complainant filed affidavits for its U.S. Registration No. 2,097,112 pursuant to 15 U.S.C. § 1058 and § 1065. Complainant’s FLEXEEL mark is valid and incontestable. Complainant distributes its products throughout the United States and in Canada, Mexico, Central America, Israel, Puerto Rico, the Philippines and Singapore. Complainant’s company is successful and widely recognized as an industry leader.

The domain name at issue currently links to a website that offers for sale a large selection of name brand air-line accessories. The site can be accessed through several domain names: <airhosesupply.com>; <airhosereels.com>; and <flexeel.com>. The disputed domain name is an alternate avenue by which visitors are directed to Respondent’s site.

Complainant states that it has made numerous attempts to contact Respondent to discuss the Respondent’s improper use of the domain name and to purchase the domain name registration, but Respondent has not replied to phone calls or emails.

Respondent’s domain name is identical to Complainant’s mark. Respondent’s domain name incorporates the entirety of Complainant’s trademark. The domain name format does not diminish the fact that Respondent’s domain name is identical to Complainant’s mark. Thus, the requirements of the Policy 4(a)(1) are satisfied.

Respondent has no legitimate interest in the mark. As discussed above, Complainant owns a registration for the FLEXEEL mark and has since 1996. Complainant has not licensed nor authorized Respondent to use the mark. Respondent registered the disputed domain name in April 2004, after Complainant had acquired trademark rights in the mark. Thus, Complainant has sufficiently alleged a prima facie case that Respondent has no legitimate interest in the disputed domain name.

Respondent did not use the domain name in connection with a bona fide offering of goods or services before receiving notice of Complainants interest in the mark. Complainant’s trademark was registered in 1996 and based on the USPTO’s records, has achieved incontestable status. Respondent registered the domain name <flexeel.com> on April 11, 2004. Thus, Respondent had constructive knowledge of Complainant’s mark when he registered the disputed domain name. Further, Respondent’s site sells Complainant’s products under the FLEXEEL mark. Respondent’s actual knowledge of Complainant’s interest in the mark can, therefore, be imputed. Such knowing use cannot be considered a bona fide offering of goods or services. Respondent cannot demonstrate a legitimate interest in the use of the domain name under section 4(c)(i) of the Policy.

Respondent has not been commonly known by the domain name. Respondent’s websites, <airhosesupply.com>, also known as <airhosereels.com>, claim that his business began in 1998. Respondent only recently acquired the domain name <flexeel.com> and does not do business under that name. The domain name is used as an alternate address by which Respondent’s <airhosesupply.com> site is accessed. Respondent cannot demonstrate a legitimate interest in the use of the domain name under section 4(c)(ii) of the Policy.

Respondent is not making legitimate non-commercial fair use of Complainant’s domain name. Respondent uses the domain name in question to divert visitors to his revenue producing site. Respondent’s use of Complainant’s trademark in the Domain Name will attract people seeking information about Complainant’s products and thus, divert potential customers away from Complainant. Respondent cannot demonstrate a legitimate interest in the use of the domain name under section 4(c)(iii) of the Policy.

The Domain Name was registered in bad faith. Policy 4(b). Respondent is using the domain name for commercial gain and to create confusion as to the sponsorship, affiliation or endorsement of his website by Complainant. Respondent’s business is a distributorship of compressed air-line accessories. Thus, Respondent is using the disputed domain name for commercial gain. Respondent’s use of Complainant’s mark as an alternate route by which customers can access his site is an attempt to trade on the strength of Complainant’s mark. Respondent sells Complainant’s products, though not pursuant to an authorizing agreement to do so, and his use of Complainant’s mark would likely lead to confusion as to whether Complainant sponsored or endorsed the use of its trademark. Here, Complainant’s incontestable mark is well-known among consumers of such products and Respondent’s knowing use of Complainant’s mark is sufficient to show bad faith.

Respondent’s lack of response to Complainant’s repeated attempts to contact him to discuss the domain name is further evidence of bad faith.

Respondent’s registration of the domain name prevents Complainant, the owner of the trademark, from using the corresponding domain name. While such a registration by itself may not be sufficient to show bad faith, taken in conjunction with the misleading use and the commercial gain by the Respondent, and the Respondent’s repeated failure to respond to Complainant’s correspondence, Respondent’s actions display bad faith in registering the domain name.

Complainant requests that the Domain Name be transferred to it.

B. Respondent

Respondent did not respond to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In a case where Respondent does not file a Response, the Panel may draw such inferences as it considers appropriate. UDRP Rules ¶14.

A. Identical or Confusingly Similar to a Mark

Complainant submitted a copy of a printout from the U.S. Patent and Trademark Office’s Trademark Application and Registrations Retrieval (TARR) system for U.S. Registration No. 2,097,112 for the mark FLEXEEL. Section 8 and 15 affidavits were filed with the USPTO in 2002. While Complainant did not submit additional evidence in support of its trademark rights, Complainant asserted in its Complaint that it is using the mark in commerce.

The Panel finds that Complainant has rights to the mark FLEXEEL and that the domain name <flexeel.com> is identical to the mark.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(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 [Respondent] (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 [Respondent] 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.

Complainant has sufficiently made a prima facie showing that Respondent has no rights or legitimate interest in the domain name.

Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.

Respondent’s use of the Domain Name to direct Internet users to Respondent’s commercial website is not a bona fide offering of goods or services under Policy paragraph 4(c)(i). Based on the evidence of record, the Panel finds that Respondent does not have any rights or legitimate interests under paragraphs 4(c)(ii) or (iii).

The Panel finds that Complainant has satisfied 4(a)(ii) of the Policy, and that Respondent lacks any “rights or legitimate interests” in respect of the Domain Name for purposes of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds that Respondent registered and is using the domain name in bad faith under paragraph 4(a)(iv) of the Policy. Respondent selected the domain name <flexeel.com>, which is identical to Complainant’s mark. At the time of Respondent’s domain name registration, Complainant’s mark was already federally registered with the USPTO. Further, the parties are in the same business and Respondent would have had actual knowledge of Complainant’s rights to its mark.

The Panel finds that Complainant has satisfied 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <flexeel.com> be transferred to Complainant.

Jeffrey H. Kaufman
Sole Panelist

Dated: March 17, 2005