Ridgid, Inc. and Emerson Electric Co. v. kwan lee
Claim Number: FA1202001429685
Complainant is Ridgid, Inc. and Emerson Electric Co. (“Complainant”), represented by Douglas C. Hamilton of Emerson Electric Co., Missouri, USA. Respondent is kwan lee (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ridgidtools.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2012; the National Arbitration Forum received payment on February 15, 2012.
On February 15, 2012, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <ridgidtools.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ridgidtools.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Ridgid, Inc. and Emerson Electric Co. Complainant alleges that Complainant Ridgid Inc. is a wholly owned subsidiary of Ridge Tool Company, which is a wholly-owned subsidiary of Complainant Emerson Electric Co. Complainant asserts that Complainants are the owners of various trademark registrations in the United States, Australia and elsewhere that comprise the RIDGID mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel finds that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding. Throughout this Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. RIDGID, Inc. and Ridge Tool Company are wholly-owned subsidiaries of Emerson Electric Co.
2. Complainants are the owner of various trademark registrations for the RIDGID mark with Japan’s Patent Office (“JPO”), the United States Patent and Trademark Office (“USPTO”), and IP Australia, among others:
JPO Reg. No. 669,032 registered Mar. 2, 1965
JPO Reg. No. 5,249,370 registered July 17, 2009
USPTO Reg. No. 2,681,242 registered Jan. 28, 2003
USPTO Reg. No. 3,305,479 registered Oct. 9, 2007
USPTO Reg. No. 3,333,460 registered Nov. 13, 2007
IP Australia Reg. No. 154,860 registered July 13, 1959
IP Australia Reg. No. 628,373 registered July 1, 1996
3. Complainant manufactures tools and equipment for professional trades, serving the rental, plumbing, HVAC/R, utility, industrial, electrical, petroleum, institutional, commercial and hardware markets and selling its products in over 140 countries.
4. Respondent’s <ridgidtools.com> domain name is identical or confusingly similar to Complainant’s RIDGID mark.
5. Respondent’s <ridgidtools.com> domain name resolves to a website featuring a pop-up advertisement declaring the visitor a “winner” and prompting the visitor to “select a prize.”
6. Respondent’s resolving website also solicits Internet visitors’ e-mail addresses and other information, presumably commercially gaining from the receipt of the information.
7. Respondent uses the disputed domain name for the purpose of phishing.
8. Respondent is not commonly known by the disputed domain name.
9. Respondent opportunistically registered the disputed domain name in bad faith because the domain name is obviously connected with a well-known mark.
10. Respondent registered and uses the disputed domain name to intentionally attract Internet users to the third-party website for commercial gain by creating a likelihood of confusion with the RIDGID mark.
11. Respondent offered to sell the disputed domain name to Complainant on November 22, 2011 for $2,000, an amount which presumably exceeds Respondent’s out-of-pocket expenses.
B. Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
(4) 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.”).
Complainant argues that it has established rights in the RIDGID marks through its registrations of the mark with the JPO, the USPTO, and IP Australia, among other trademark authorities worldwide:
JPO Reg. No. 669,032 registered Mar. 2, 1965
JPO Reg. No. 5,249,370 registered July 17, 2009
USPTO Reg. No. 2,681,242 registered Jan. 28, 2003
USPTO Reg. No. 3,305,479 registered Oct. 9, 2007
USPTO Reg. No. 3,333,460 registered Nov. 13, 2007
IP Australia Reg. No. 154,860 registered July 13, 1959
IP Australia Reg. No. 628,373 registered July 1, 1996
The Panel finds that these trademark registrations sufficiently prove Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010) (finding that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Givenchy S. A. v. Int’l Domain Registry, FA 1130485 (Nat. Arb> Forum Feb. 27, 2008) (stating that the complainant’s registration of its mark with IP Australia sufficiently established its Policy ¶ 4(a)(i) rights in the mark).
Complainant alleges that Respondent’s <ridgidtools.com> domain name is identical and/or confusingly similar to Complainant’s RIDGID mark as the “ridgid” part of the domain name is identical to the mark and the term “tools” is just an added descriptive term which does not overcome confusing similarity. Complainant also asserts that the addition of the generic top-level domain (“gTLD”) “.com” does not create a level of distinctiveness that would overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). Neither the addition of the descriptive term “tools” nor the gTLD “.com” has any distinguishing effect, and the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark according to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has never traded under the name “Ridgid Tools” or “ridgidtools.com.” Complainant argues that Respondent hides its identity with a privacy service because it does not want to be identified or contacted by Complainant or confused consumers. The WHOIS information identifies the registrant as “kwan lee,” which suggests no affiliation with the disputed domain name. The Panel determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
Complainant asserts that Respondent uses the <ridgidtools.com> domain name to redirect unsuspecting Internet users to a website with a pop-up declaring the visitor to be a “winner” and prompting the visitor to select a prize. Complainant argues that, after selecting a prize, visitors are prompted to provide an e-mail address and other information, from which Respondent presumably profits as part of a phishing scheme. This scheme is not evidence of either a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Michigan First Credit Union v. Abbas AlHalbi, FA 1401162 (Nat. Arb. Forum Sept. 7, 2011) (finding that use of the disputed domain to advertise prizes and attempt to collect personal information from Internet users for profit was a phishing scheme that did not satisfy Policy ¶¶ 4(c)(i) and (iii)).
Complainant has proven this element.
Complainant alleges that Respondent offered to sell the disputed domain name to Complainant for an amount that is greater than Respondent’s out-of-pocket expenses. Complainant asserts that Respondent replied to Complainant’s cease and desist letter by offering to sell the <ridgidtools.com> domain name for $2,000. This attempt to sell is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Complainant asserts that Respondent registered and uses the <ridgidtools.com> domain name to redirect unsuspecting Internet users to a website attempting to phish for personal information by advertising that the Internet user has won a prize. Complainant argues that Respondent presumably receives commercial gain from the personal information it collects. The Panel finds that Respondent registered and uses the disputed domain name with the intent to intentionally attract and confuse Internet users about the resolving website’s affiliation with Complainant for its own profit, which signals bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant argues that Respondent registered the <ridgidtools.com> domain name with knowledge of Complainant’s RIDGID mark because Complainant had registered its mark with multiple trademark authorities around the world, Complainant had owned those trademark registrations for many years, and the disputed domain name was connected with Complainant’s mark. The Panel finds that Respondent had actual knowledge of the mark at the time of the disputed domain name registration. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ridgidtools.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 29, 2012
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