national arbitration forum

 

DECISION

 

Andreas Stihl AG & Co. KG v. Vuttichai Saengthong

Claim Number: FA0810001230667

 

PARTIES

Complainant is Andreas Stihl AG & Co. KG (“Complainant”), represented by Gleiss Lutz Rechtsanwaelte, Germany.  Respondent is Vuttichai Saengthong (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <discountstihlchainsaws.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.

 

On October 23, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discountstihlchainsaws.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 25, 2008 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@discountstihlchainsaws.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions:

 

1.      Respondent’s <discountstihlchainsaws.com> domain name is confusingly similar to Complainant’s STIHL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <discountstihlchainsaws.com> domain name.

 

3.      Respondent registered and used the <discountstihlchainsaws.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Andreas Stihl AG & Co. KG, holds several trademark registrations for the STIHL mark, including with the German Patent and Trade Mark Office (“DPMA”) (Reg. No. 603,076 issued October 1, 1948), the European Union Office for Harmonization in the International Market (“OHIM”) (Reg. No. 1,978,626 issued April 18, 2002), and United States Patent and Trademark Office (“USPTO”) (Reg. No. 855,458 issued August 27, 1968) in connection with its chainsaw and brush-cutter business.

 

Respondent registered the <discountstihlchainsaws.com> domain name on April 23, 2008.  Respondent is using the disputed domain name to sell Complainant’s products without authorization along with products from Complainant’s competitors.

 

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 it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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 and/or Confusingly Similar

 

Complainant’s registration of the STIHL mark with the DPMA, OHIM, and USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

The <discountstihlchainsaws.com> domain name consists of the elements “discount,” “stihl,” “chainsaws,” and “.com.”  The element “stihl” is complainant’s entire and unaltered mark.  The generic top-level domain “.com” is irrelevant when comparing domain names to trademarks to determine if Policy ¶ 4(a)(i) is met.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  The addition of the common descriptive word “discount” does not diminish the similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).  The generic term “chainsaws” describes the product produced by Complainant and results in confusing similarity to Complainant’s STIHL mark pursuant to Policy ¶ 4(a)(i).  See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The Panel therefore finds that the <discountstihlchainsaws.com> domain name is confusingly similar to Complainant’s STIHL mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name.  Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant Policy ¶ 4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).  The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <discountstihlchainsaws.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the STIHL mark, and the WHOIS information identifies Respondent as “Vuttichai Saengthong.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the disputed domain name to resolve to a commercial website that sells chainsaws made by Complainant and Complainant’s competitors.  Respondent’s use of Complainant’s STIHL mark to redirect Internet users to its commercial website is therefore not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i); neither is it a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii).  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <discountstihlchainsaws.com> domain name, which is confusingly similar to Complainant’s STIHL mark, to redirect Internet users to Respondent’s commercial website.  Respondent’s website sells Complainant’s goods and those of Complainant’s competitors.  The Panel finds that such use constitutes disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

 

Because Respondent’s domain name is confusingly similar to Complainant’s STIHL mark, Internet users accessing Respondent’s disputed domain name may become confused as to Complainant’s affiliation or endorsement of the resulting website and the disputed domain name.  Respondent is seeking to profit from this confusion.  Thus, Respondent’s use of the <discountstihlchainsaws.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

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 relief shall be GRANTED.

 

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

 

__________________________________________________________________

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 17, 2008

 

 

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