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.
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.
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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