DECISION

 

C & E Fein GmbH & Co. d/b/a C & E Fein LLC v. Ky Mierendorff

Claim Number: FA0308000183729

PARTIES

Complainant is C & E Fein GmbH & Co. d/b/a C & E Fein LLC, Stuttgart, Germany (“Complainant”) represented by John A. Monocello III, of Cohen & Grigsby P.C. Respondent is Ky Mierendorff, Naples, FL, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <feinblades.com>, registered with Network Solutions, Inc.

PANEL

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

Anne M. Wallace, Q.C., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2003; the Forum received a hard copy of the Complaint on August 11, 2003.

On August 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <feinblades.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 19, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 8, 2003 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@feinblades.com by e-mail.

A timely Response was received on September 8, 2003. However, the hard copy of the Response, required by UDRP Rule #5(b), was not received before the Response deadline, making the Response deficient. The Panel chooses to consider Respondent’s noncompliant Response in reaching its decision because it is of the view that refusing to consider the response in these circumstances would be an extreme remedy not consistent with the basic principles of due process.

Complainant’s Additional Submission was received and determined to be compliant with Forum Supplemental Rule #7 on September 12, 2003.

On September 18, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant submits that:

·        The Complaint is based on the common law and registered trademark "FEIN" (words and design) U.S. Reg. No. 1,115,952, registered on April 3, 1979, ("the Trademark") owned by Fein GmbH and licensed to Fein Power Tools, Inc. (“Fein US”), an authorized distributor of FEIN branded products in the United States.  Fein GmbH has owned and used the mark for nearly seventy (70) years since 1934 and has a first use in commerce date of 1956. 

·        Fein GmbH has licensed Fein US to use the Trademark.  Pursuant to an agency agreement (“Agency Agreement”), Fein GmbH authorizes Fein US to be the exclusive authorized distributor of FEIN branded products in the United States.  Fein US has been the exclusive distributor of Fein branded products in the United States since 1980, and Fein US has used the Trademark since that time. 

·        Both Fein GmbH and Fein US have used and continue to use the Trademark in connection with the following goods and services: hand held, portable electric tools and parts thereof, namely, drills, hammers, tappers, screwdrivers, impact wrenches, grinders, sheet metal shears, nibblers, pipe milling machines and saws.  Specifically, Fein GmbH and Fein US use the Trademark in connection with the sale of blades used in the construction industry, for example, blades used in connection with grout removal, hardwood floor sawing and caulking/sealant removal.  Fein US provides links on its web site to authorized on-line retailers of FEIN branded products and to authorized warranty repair centers. 

With this background, Complainant asserts that the domain name <feinblades.com> incorporates the Trademark in its entirety and merely adds to it the generic term "blades".  Adding a generic word to a trademark renders the resultant composite confusingly similar to the trademark.  See Disney Enters., Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003), citing, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Sony Kubushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).  Therefore, since the domain name <feinblades.com> is an exact copy of the trademark (with the addition of a generic term), the domain name is confusingly similar to Complainant's Trademark. 

With respect to rights or legitimate interests, Complainant asserts that Respondent’s use of the disputed domain name is not bona fide. First, Fein GmbH is the exclusive owner of the Trademark, FEIN, and as the exclusive owner, Fein GmbH has not licensed Respondent to use the Trademark.  Next and notably, Respondent is selling products, and more specifically blades, on its web site that are not FEIN branded blades.  Users visiting <feinblades.com> are presented with lower priced non-Fein branded blades that are of unknowable quality. Essentially, Respondent is misappropriating the goodwill and recognition associated with the FEIN Trademark to lure users to its site where the user could subsequently purchase a product from a competing manufacturer.  Respondent is therefore usurping internet traffic rightly intended for the Complainant.  See Disney Enters., Inc. v. McSherry, FA 154589.  Relevant law states that no legitimate or bona fide use or interest in the domain name can be found when a respondent, who is selling competing goods and services, is diverting consumers to its own web site by using a complainant's trademark in its domain name.  See Disney Enters., Inc. v. McSherry, FA 154589, citing, N. Coast Med., Inc. v. Allegri Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2002) and Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000).  To conclude otherwise "would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the [ICANN] Policy."  Ciccone v. Parisi, D2000-0847 (WIPO May 28, 2001). 

Lastly, the evidence shows that the person and entity that are improperly using the <feinblades.com> domain name is one of three entities, none of which are commonly, if ever, referred to as "feinblades."  The contact information for Respondent's <feinblades.com> domain name indicates that users wishing to contact Respondent should direct their inquiries to a mailing address for Market World, Inc. Further, in a response to Complainant’s cease and desist letter sent to Respondent, Respondent's counsel at the time referred to Respondent as "Mr. Mierendorff, d/b/a Tile EZ USA, Inc."  Thus, it would appear that Respondent is most commonly known as "Mr. Mierendorff," "Market World, Inc." or "Tile EZ USA."

Whatever the commonly known name for the Respondent, Complainant asserts the evidence shows that it is not "feinblades".  Accordingly, Complainant asserts Respondents have no legitimate rights in the domain name pursuant to ICANN Policy 4(c)(ii). 

With respect to the element of bad faith, Complainant asserts that Policy 4(b)(iv) applies in this case because Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location, or of a product or service on Respondent’s web site or location.  Complainant submits that the traditional factors for a likelihood of confusion analysis weigh in the Complainant’s favor:

·        The factor of the actual similarity of the domain name to the Trademark weighs heavily in Complainant’s favor.  The domain name <feinblades.com> incorporates the Trademark in its entirety and merely adds to it the generic term "blades".  Adding a generic word to a trademark renders the resultant composite confusingly similar to the trademark.

·        With respect to the strength of Fein GmbH’s Trademark, this factor also weighs in the Complainants' favor.  The FEIN name and trademark is the namesake of the company’s founder, Wilhelm Emil Fein.  Wilhelm Emil Fein was developing electromedical equipment and working on supplying German cities with electrical generating distribution systems when, in 1895, he invented the world’s first portable electric tool: a drill.  His invention launched the power tool industry.  Both Fein GmbH and Fein US have expended a significant amount of money and resources developing the Trademark through extensive marketing.  The high quality of FEIN branded products have caused the FEIN name to become associated by the relevant consuming public with high quality goods originating from Fein GmbH.  And in the United States, wholesalers and purchasers have come to expect that Fein US is the channel through which they can obtain FEIN branded goods.  As a result of the extensive marketing and the high quality of FEIN branded goods, both Fein GmbH and Fein US have built up tremendous goodwill associated with the mark FEIN.  As the only authorized distributor of FEIN branded products in the United States, Fein US has properly used (and developed) the goodwill and recognition associated with the Trademark to promote its business of selling the FEIN branded products to authorized retailers providing links to authorized on-line retailer on its website at the <feinus.com> domain name.  The Respondent, on the contrary, has improperly used this goodwill by merely riding on the coattails of this successful mark – and without investing a cent into the efforts that went into the Trademark's success.

·        With respect to the similarity of the goods and services, that factor also weighs in Complainant’s favor since the Respondent is using the domain name <feinblades.com> to sell tools and accessories, namely blades, all of which are goods and services that Fein GmbH manufacturers (and Fein US distributes) under the Trademark FEIN.

·        Respondent’s business and Complainant’s business are both marketed through similar channels.  Both Complainant and Respondent are marketing goods through the Internet, a marketing channel that increases the likelihood that consumers will be confused into believing that Complainant sponsors Respondent's website at the <feinblades.com> domain name.  Confusion with respect to sponsorship or affiliation with a website is a type of confusion covered by the ICANN Policy.  Consumers using the Internet who visit the <feinblades.com> domain name are likely to be confused in to believing that the Complainant sponsors the website at that domain name.  Consumers would also visit <feinblades.com> expecting to discover information about Complainant, and such is not the case.

·        Respondent is selling competing products, specifically blades, that are not FEIN branded blades and on its website at the <feinblades.com> domain name.  In doing so, the Respondent is misappropriating the goodwill and recognition associated with the FEIN Trademark to lure users to its website where users could subsequently purchase a product from a competing manufacturer.  Respondent is therefore usurping internet traffic rightly intended for Complainant. 

·        In conjunction with its offering of competing products for sale on its website, the Respondent is offering for sale FEIN branded products on its site.  But these offerings are without authorization since Fein US is the only authorized agent for Fein GmbH in the United States.  In its role as the exclusive agent for Fein GmbH, Fein US carefully selects on-line dealers to be dealers of FEIN products based on, among other attributes, the on-line dealer's knowledge of the product, ability to stock the product, customer service, and sales ability. Contrary to being authorized and upon information and belief, the Respondent is obtaining FEIN branded products on the gray market (from an unspecified European wholesaling source), importing the goods without authorization, and offering the goods for sale to internet users at a lower cost – all the while undercutting Fein US, the rightful agent of FEIN branded products in the United States. 

·        But for Fein US’s extensive marketing efforts in the United States and strict controls on the quality of distribution channels, the FEIN Trademark would have little to no effect in the minds of the consumer, and therefore Respondent’s web site would enjoy little to no traffic by those consumers.  However, the unfortunate reality is that Respondent is riding on the coattails of Complainant’s success without investing one dollar in the efforts that went into that success.

Further, Fein US is obligated by way of an agreement with Fein GmbH to assure that the general appearance of the products, displays of products, advertising, etc… meets Fein GmbH’s standards by being homogenous and in line with the corporate identity.  Respondent’s website at the <feinblades.com> domain name does not meet Complainant’s standards and threatens to weaken Complainant’s image and corporate identity in the market place. 

·        The length of use of the Trademark, the goodwill associated with the Trademark and the resources spent to build that goodwill demonstrate that the Trademark FEIN is well known and highly regarded by the relevant consuming public.  That the Trademark has achieved such longstanding success is the obvious reason Respondent has chosen to incorporate the mark in its entirety into its domain name for a web site that sells the exact same products that the Trademark relates to.  The incorporation of the total Trademark in its domain name is likely to cause the consumer to believe that the <feinblades.com> domain name is sponsored by Complainant.  These and all other factors mentioned above demonstrate that Respondent is acting in bad faith, that the domain name is confusingly similar, and that the name should rightfully be transferred to Complainant.

 

 

B. Respondent

Respondent submits that:

·        The disputed domain name is not identical to the name C & E Fein GmbH & Co., and it is not confusingly similar to a trademark or a service mark. The website states that Respondent has no relations to the C & E Fein GmbH & Company. It does not cause any confusion. Respondent is not misappropriating the goodwill and recognition of the FEIN trademark.

·        Respondent alleges it created the goodwill and recognition for a specific tool manufactured by the C & E Fein GmbH & Co. in Germany by marketing it at Respondent’s own expense to a specific trade group since 1994.

·        Respondent’s website has a disclaimer and clearly states:

o       Brand names and trademarks are the property of their respective holders and are for descriptive use only.

o       Disclaimer:

§         We are not, in any, way related and we do not represent the "C & E Fein GmbH& Co.KG. Of Stuttgart, Germany" and its subsidiaries or branches

·        The website at the <feinblades.com> domain name does not show any registered FEIN logos or symbols.

·        The FEIN trademark is not the Name “FEIN”. It is only the image and the logo with the word “FEIN”

·        There is no trademark for “feinblades” or any other trademark for blades from the C & E Fein GmbH & Company.

·        The word “feinblades” is Respondent’s creation, the C & E Fein GmbH & Company has never had the word  “feinblades” in any of their publications, advertising etc.

·        The word “fein” means in German the same as the word fine in English. Respondent is from Germany and also market blades in Germany and other countries.

·        The domain name “feinblades” has not been registered or used in bad faith as outlined in Paragraph 4. This name was created during the time of distributorship with the C & E Fein GmbH & Co of USA.

·        Respondent has purchased from the C & E Fein GmbH & Co in the USA only one specific electric power tool type and accessories since 1994 as a distributor. Respondent has sold the tools to its own customers under a self-created name: The “Dustless Grout remover” and has advised their customers that the electric tool was manufactured by the C & E Fein GmbH & Company.

·        In 2002 the C & E Fein GmbH & Comp. of USA cancelled the Distributor agreement with Respondent.

·        Respondent continues to sell accessories to its customers, including saw blades etc. The origin or qualities of the blades sold to Respondent’s customers are not subject to Paragraph 4 ICANN rules.

·        The C & E Fein GmbH & Co of USA is trying to restrict free trade by refusal of sales to wholesaler like me and regulating prices in the USA. This is an illegal and criminal act.

·        The C & E Fein GmbH & Co of USA is using the ICANN rules to illegally defraud Respondent by trying to take over the <feinblades.com> domain name and to take over Respondent for profit without compensation.

·        The C & E Fein GmbH & Co of USA has conspired with a Canadian Company to compete against Respondent. Respondent has sold the tools only to a specific group:  The Ceramic Tile and Stone workers and industries for over 8 years. The C & E Fein GmbH & Co of USA is now pursuing all Respondent’s customers in this specific category.

None of Respondent’s submissions are substantiated by any evidence filed in this matter, but are rather assertions in the Response with no evidence to establish them. Therefore, Respondent’s assertions can be given little weight in this proceeding.

C. Complainant’s Additional Submissions

The domain name <feinblades.com> incorporates the trademark FEIN in its entirety while merely adding to it the generic term "blades".  In this connection, adding a generic word to a trademark renders the resultant composite confusingly similar to the trademark.  See Disney Enters., Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003), citing, Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Sony Kubushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).  Therefore, since the domain name <feinblades.com> is an exact copy of the trademark (with the addition of a generic term), the domain name is confusingly similar to Complainant's Trademark. 

            Respondent has not substantively responded to this contention.  Respondent simply makes the bald assertion that "[its] domain name is not identical to the name C & E Fein GmBH & Co.  And it is not confusingly similar to a trademark or service mark."  Respondent's assertion that its domain name is not identical to the name "C & E Fein GmBH & Co." is irrelevant.  The asserted trademark is FEIN.  Therefore, any comparisons made with respect to Respondent’s <feinblades.com> domain name must be made with respect to the asserted mark FEIN and not "C & E Fein GmBH & Co".  As such, outside of its bald assertion, Respondent has not come forward with any evidence (or argument) that its domain name is not confusingly similar to Complainant's trademark FEIN.

In its Response, Respondent apparently argues that its disclaimer should counter any confusion or inference of bad faith.  This argument is not supported by the relevant case law. 

It is well-settled law that words in many domain names can and do communicate information as to the source or sponsor of the cite.  See PACAR, Inc. v. Telescan Techs., L.L.C.,  319 F.3d 243, 250 (6th Cir. 2003).  Using another's trademark in a domain name is likely to cause confuse consumers as to the source and sponsorship of the site.  See id.;  see also FANUC Ltd. v. Mach. Control Servs., FA 93677 (Nat. Arb. Forum Mar. 13, 2000).  When Internet Users initially visit a website, they may do so out of confusion or may be confused once they are at the website.  Such confusion is initial interest confusion.  Respondent's use of a disclaimer cannot alleviate the initial interest confusion caused by its improper use of Complainant's mark in its domain name:

Respondent's use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel the initial interest confusion that is inevitable from Respondent's actions.  Such confusion is a basis for finding a violation of Complainant’s rights.

Accordingly, the Complainant respectfully submits that Respondent’s domain name <feinblades.com> is confusingly similar to Complainant’s trademark FEIN.

Respondent has indicated that the Complainant's trademark is not FEIN.  Nothing could be further from the truth.  As stated in Paragraph 4(c) of the Complaint, the Complainant is asserting its Common Law trademark rights in the name "Fein".  Complainant has secured these rights through its use of the mark throughout the history of the company and its expenditure of significant amounts of money and resources developing the Trademark through extensive marketing. As a result of the extensive marketing and the high quality of FEIN branded goods, the Complainant has built up tremendous goodwill associated with the mark FEIN, and the mark is recognized by consumers as a source indicator of FEIN branded goods.  Therefore, the term FEIN is the Complainant's trademark by virtue of its common law rights.  See generally  Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994);  See also Laurel Capital Group, Inc. v. BT Fin. Corp., 45 F. Supp.2d 469, 481 n.11 (W.D. Pa. 1999) (quoting McCarthy on Trademarks § 15.5) 

           Notably, Respondent has not addressed Complainant’s poignant evidence of the Respondent’s bad faith, which is that Respondent is selling competing products, specifically blades, that are not FEIN branded blades on its website at the <feinblades.com> domain name.  In doing so, Respondent is misappropriating the goodwill and recognition associated with the FEIN Trademark to lure users to its site where users could subsequently purchase a product from a competing manufacturer.  Respondent is therefore usurping internet traffic rightly intended for Complainant. 

           Respondent is not licensed to use the mark.  Respondent admits that it is unauthorized to distribute Fein products in Paragraph 6 of its Response tending to further establish that Respondent is acting in bad faith.

           As stated in the Complaint, Fein US carefully selects on-line dealers to be dealers of Fein products based on, among other attributes, the on-line dealer's knowledge of the product, ability to stock the product, customer service, and sales ability. Contrary to being authorized and upon information and belief, the Respondent is obtaining FEIN branded products on the gray market (from an unspecified European wholesaling source), importing the goods without authorization, and offering the goods for sale to internet users at a lower cost – all the while undercutting Fein US, the rightful agent of FEIN branded products in the United States. Since Respondent is not authorized to be a distributor or is authorized or licensed to incorporate Complainant’s trademark in its domain name, Respondent should be deemed to have acted in bad faith.

FINDINGS

The panel finds as follows:

1.      The domain name <feinblades.com> is confusingly similar to Complainant’s FEIN trademark.

2.      Respondent does not have rights or legitimate interests in the disputed domain name.

3.      Respondent registered and is using the disputed domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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 has established that it has rights in the FEIN mark through registration of the mark in the United States and through widespread and continuous use of the mark in commerce. The disputed domain name <feinblades.com> incorporates the FEIN mark in its entirety and merely adds the generic word “blades” to the FEIN mark, with the result that the disputed domain name is still confusingly similar to Complainant’s mark. The fact that Respondent’s website carries a disclaimer indicating that Respondent is not affiliated with Complainant does not detract from the initial interest confusion created from Respondent using a domain name that is confusingly similar to Complainant’s mark.

Complainant therefore succeeds on the first element.

Rights or Legitimate Interests

For Respondent to rely on Policy 4(c)(i), Respondent must establish that it is using the domain name in connection with a bona fide offering of goods or services. In this case, Respondent is offering goods for sale under Complainant’s FEIN mark. Complainant is the exclusive owner of the mark and has not licensed the mark to Respondent. Furthermore, Respondent is using Complainant’s name to sell products that are not FEIN products but those of competing manufacturers. The logical inference to be drawn from Complainant’s evidence, which has not been contradicted by Respondent, is that Respondent is using the FEIN mark in conjunction with the word “blades” to lure customers to Respondent’s website where Respondent sells competing products. In these circumstances the Panel agrees with Complainant that Respondent is not engaging in a bona fide offering of goods or services as required by the Policy.

Policy 4(c)(ii) does not assist Respondent because there is no evidence that Respondent has ever commonly been known by the name “feinblades”.

Policy 4(c)(iii) does not assist Respondent either as Respondent’s use of the disputed domain name is clearly for commercial purposes.

Complainant, therefore, succeeds on the second element.

Registration and Use in Bad Faith

While Policy 4(b) contains several instances where the Panel is directed to find bad faith, Complainant replies only on Policy 4(b)(iv) and asserts that 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location, or of a product or service on Respondent’s web site or location. 

The evidence before the Panel, which has not been contradicted, is that Complainant owns a well-known mark that is being used by Respondent to attract Internet users to Respondent’s website for the purpose of then luring those users to purchase products found on Respondent’s website. The products on that website are similar in nature to the products sold by Complainant under the FEIN mark and Respondent even purports to sell Complainant’s products, although not authorized to do so. Respondent is well aware of Complainant’s business and Complainant’s mark because Respondent admittedly was at one time authorized to sell Complainant’s products. The only logical inference to be drawn from all the evidence is that Respondent is using Complainant’s mark to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products sold on that web site. That being the case, Respondent has registered and is using the disputed domain name in bad faith within the meaning of the policy.

Complainant therefore succeeds on the third element as well.

 

 

 

 

 

 

 

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 <feinblades.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Anne M. Wallace, Q.C., Panelist
Dated: October 1, 2003

 

 

 

 

 

 

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