THE STANLEY
WORKS V. MCNEIL & ASSOCIATES
Claim Number: FA0004000094671
PARTIES
Complainant
is The Stanley Works, New Britain,
Conn, USA (“Complainant”) represented by James R. Davis, II of Arent
Fox Kintner Plotkin & Kahn.
Respondent is McNeil &
Associates, Grande Prairie, Alberta, Canada (“Respondent”) represented by James
E. Starnes, Esq.
The
domain names at issue are <stanley-proto.com>; <stanley-husky.com>;
<stanley-tools.com>; and <stanley-hardware.com>,
registered with Internet Domain Registrars.
PANEL
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
filed a Complaint with the National Arbitration Forum (the “Forum”) on April
27, 2000.
Internet
Domain Registrars confirmed that the domain names <stanley-proto.com>;
<stanley-husky.com>; <stanley-tools.com>; and <stanley-hardware.com>,
are registered with Internet Domain Registrars and that Respondent is the
current registrant of the name. Internet Domain Registrars has verified that
Respondent is bound by the Internet Domain Registrars 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”).
After
reviewing the Complaint for administrative compliance, the Forum transferred
the Complaint to the Respondent, McNeil & Associates, in compliance with
Rule 2(a), and the administrative proceeding was commenced pursuant to Rule
4(c).
On
May 23, 2000, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
Respondent
responded to the Complaint requesting that the administrative proceedings be
stayed pending resolution of a legal action commenced on April 27, 2000 in the
United States District Court for the Northern District of California. On June 8, 2000 the Panel suspended the
administrative proceedings pending the outcome of the California federal
litigation.
Having
received notification that the federal action had been dismissed, the Panel
gave the Respondent until June 7, 2002 to Respond to the ICANN Complaint. On June 7, 2002 Respondent responded to the
Complaint and also moved to dismiss the proceedings or continue the stay. Complainant filed a Reply on June 12,
2002. The Panel stayed the proceedings
until August 10, 2002.
Respondent’s case in the United District Court for the
Northern District of California was dismissed for forum non
conveniens. The Ninth Circuit Court of Appeals affirmed
the ruling on April 10, 2002 indicating that Respondent should pursue his
claims in the Canadian Courts. In his
June 7, 2002 Response, Respondent contended that his options were to appeal the
Ninth Circuit decision to the United States Supreme Court by August 10, 2002 or
amend his Answer in the Canadian case between him and Stanley to assert his
First Amendment right to continue using the domains to promote his anti-Stanley
website. The Respondent alleged that
the issues in the Ninth Circuit and Canadian case were virtually identical to
the ICANN case and that the resolution of those issues would resolve this case.
The Panel continued the stay until August 10, 2002, the last
day by which Respondent could appeal to the United States Supreme Court. The Panel directed that the stay would
automatically dissolve at 11:59 p.m. August 10, 2002, unless Respondent
submitted evidence to the Panel that either that he had appealed the Ninth
Circuit decision to the United States Supreme Court or had obtained leave to
amend his Answer in the Canadian proceeding to assert his First Amendment
right. In the absence of such evidence,
the Stay would dissolve and Respondent would be granted until August 20, 2002
within which to renew his Motion to Dismiss and Respond to the ICANN Complaint
and Complainant would be given until August 30, 2002 within which to Reply to
Respondent’s Response.
Respondent did not appeal to the United States Supreme
Court, and did not obtain leave to amend his Answer in the Canadian
proceeding. The stay dissolved on
August 10, 2002. Respondent filed an
Additional Response on August 19, 2002 and Complainant filed a Reply on August
29, 2002.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <stanley-proto.com>;
<stanley-husky.com>; <stanley-tools.com>; and <stanley-hardware.com>
domain names are identical or confusingly similar to Complainant’s
registered STANLEY, HUSKY, and PROTO registered trademarks.
2. Respondent has no rights or legitimate
interests in the domain names.
3. Respondent registered and used the
disputed domain names in bad faith.
B. Respondent’s primary contention is that
he uses these Stanley related names to promote his anti-Stanley website
<stanleysucks.com>. Respondent
contends that such use constitutes legitimate, non-commercial and fair use of
the domain names and that such use is protected by the First Amendment. Respondent alleges fraud, estoppel, and
equitable grounds for denying the transfer; however, these claims are beyond the
scope of an ICANN proceeding.
FINDINGS
1.
Complainant,
The Stanley Works, is a renowned global manufacturer and marketer of tools,
hardware, doors and home decor products.
Complainant was established under the trade name The Stanley Works in
1843. Stanley and its wholly owned
subsidiary, Stanley Logistics, Inc. own a number of registrations worldwide for
the marks STANLEY and STANLEY & Design used in connection with various
goods produced by Stanley.
2.
McNeil
& Associates is the registrant of the domain names in question. The contact person is Phil McNeil.
3.
On April
17, 2000, an arbitration panel found that the Phil McNeil registered in bad
faith the domain names <stanleyworks.net> and
<thestanleyworks.net>. The
Stanley Works v. Philips McNeil, FA 94233 (Nat. Arb. Forum, Apr. 17,
2000). During the course of the earlier
proceeding, McNeil revealed that he had registered a number of other domain
names similarly comprised of Stanley’s name and marks, including the domain
names now in question.
4.
This
Complaint is based on Respondent’s use of Complainant’s registered trademarks
STANLEY, HUSKY, and PROTO, as part of Respondent’s domain names. Complainant’s marks are well known and
registered in the United States and numerous countries worldwide. Complainant has invested substantial sums of
money in developing, manufacturing and marketing the products sold under its
various trademarks and well-known name resulting in substantial sales.
5.
McNeil was
once a distributor for Complainant in Canada.
In an e-mail of September 28, 1999, to Complainant, McNeil demanded that
Complainant purchase another domain name from him and threatened to register
more Stanley domain names if such purchase was not made. McNeil carried out his threats to register
more Stanley domain names. Respondent
registered the two domain names subject to the prior ICANN proceeding and then
on January 24, 2000, registered the subject domain names.
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; and
(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.
Complainant
has established that it has rights in the STANLEY, HUSKY, and PROTO trademarks
through registration and continuous use.
Respondent’s <stanley-proto.com>; <stanley-husky.com>;
<stanley-tools.com>; and <stanley-hardware.com> domain
names are confusingly similar to Complainant’s STANLEY, HUSKY, and PROTO marks
because they either combine two of Complainant’s trademarks together or combine
Complainant’s trademark STANLEY with generic terms. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the
fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish identical or confusing similarity for purposes of the
Policy despite the addition of other words to such marks”); see also Nintendo
of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name); see also Broadcom Corp. v. Domain Depot, FA
96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com>
domain name is confusingly similar to Complainant’s BROADCOM mark); see also
Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar because the WESTFIELD mark was the dominant
element); see also Yahoo! Inc. and
GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the
registration and use of multiple domain names incorporating the distinctive and
famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words
such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks
and likely to mislead Internet users into believing that products and services
offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities,
given the similarity of the names and products and services offered).
Furthermore, the addition of a hyphen to
another’s mark in a domain name does not create a distinct mark capable of
overcoming a claim of identical or confusing similarity. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (holding “that the use or absence of punctuation marks, such as hyphens,
does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026
(WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered
mark is an insubstantial change. Both the mark and the domain name would be
pronounced in the identical fashion, by eliminating the hyphen").
Accordingly, the Panel finds that Policy
¶4(a)(i) has been satisfied.
Respondent
uses the domain names in question to link to his <stanleysucks.com> site
which he uses to criticize Stanley.
Respondent contends he has legitimate interests because the domain names
are used for non-commercial reasons including the First Amendment right to
criticize Complainant.
“Domain
names ... per se are neither automatically entitled to nor excluded from
the protections of the First Amendment, and the appropriate inquiry is one that
fully addresses particular circumstances presented with respect to each domain
name." Name.Space Inc. v.
Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000). Although the content of Respondent’s site
may be entitled to First Amendment protection, his use of Complainant’s
trademark in the domain name of his site is not so protected. Since
Respondent’s domain name merely incorporates Complainant's trademark, it does
not constitute a protectable, communicative message. See OBH, INC v. Spotlight Magazine, Inc., 86 F. Supp. 2d
176, 197 (W.D.N.Y. 2000) ("Whether a particular domain name is entitled to
protection under the First Amendment depends on the extent of its communicative
message.").
Use of a Complainant’s mark to deceive Internet users into
believing they are accessing Complainant’s website is not protected by the
First Amendment. Morrison &
Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000). "Use of another's trademark is entitled
to First Amendment protection only when the use of that mark is part of a
communicative message, not when it is used merely to identify the source of a
product." OBH, 86 F.Supp.2d at 197-198 (citing Planned
Parenthood Federation of America, Inc. v. Bucci, 1997 WL 133313, 42
U.S.P.Q.2d 1430 (S.D.N.Y.1997)).
Respondent’s use of Complainant's mark as the domain name for his
website is more analogous to source
identification than to a communicative message. See OBH, 86 F.Supp.2d at 198. The domain name identifies the website as being that of
Stanley. Free speech rights do not
extend to labeling or advertising products in a manner that conflicts with the
trademark rights of others. See Yankee Pub. Inc. v. News America Pub. Inc.,
809 F.Supp. 267, 275-276
(S.D.N.Y.1992).
Because Respondent’s use of Complainant’s mark in a domain
name is not part of a communicative message, his use of Complainant’s mark is
not protected by the First Amendment. See Gucci
America, Inc. v. Hall & Associates, 135 F.Supp.2d 409, 60 U.S.P.Q.2d
1714 (S.D.N.Y. 2001). Respondent’s
domain names in question do not involve the use of a trademarked term that has
an additional expressive element or was part of a communicative message that
goes beyond commercial identification of the source of a product. The domain names link to <stanleysucks.com>,
a domain name which has critical content in the name. However, the domain names in question have no critical content so
as to distinguish Respondent from Complainant.
While
the content of Respondent’s website may enjoy First Amendment and fair use
protection, those protections do not equate to rights or a legitimate interest
with respect to a domain name which is confusingly similar to another’s
trademark. See Spence-Chapin Services to Families and Children v.
Spence-Chapin, LLC, FA 105945 (Nat. Arb. Forum May 6, 2002). (Respondent is free to criticize, but the
right to criticize does not extend to using the same or similar domain name,
without any immediate element to distinguish Respondent, as an entity, from
Complainant). Although,
Respondent may have a right to refer to the mark in critical content, the
wholesale appropriation of Complainant's mark in a domain name, without any
distinguishing material, creates confusion with Complainant's business and is
not fair use merely for the purpose of criticism. Council of Am. Survey Research Org. v. Consumer Info. Org.,
LLC, D2002-0377 (WIPO July 19, 2002).
No criticism is apparent from the domain name itself; it is not
sufficient that the criticism may be apparent from the content of the site. Id.
“The
unauthorized use of a trademark infringes the trademark holder’s rights if it
is likely to confuse an ‘ordinary consumer’ as to the source or sponsorship of
the goods.” See People for the
Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359, 366 (4th
Cir. 2001) (As to the right and legitimate interest in using the domain name
for the purpose of comment, the domain name failed to convey the message that
it was used for the purpose of comment or criticism). As Respondent is not making a legitimate noncommercial and fair
use of the domain name, Respondent’s use of Stanley trademarks as the domain
names for his website is not protected by the First Amendment.
Nor is Respondent known by Complainant’s trade names or the domain
names 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).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has no intellectual property rights in the domain names and is not known by the
names. The domain names were
deliberately registered and used for the purpose of disparaging Complainant's
business, which has a commercial impact upon Complainant's mark and on
Complainant. There is evidence of
intent to harm Complainant's goodwill and to tarnish its mark.
When
Respondent registered the domain names, he was familiar with the popularity and
notoriety of Complainant’s mark. Respondent’s
registration of the domain names, despite knowledge of Complainant’s rights in
the mark, represents bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Respondent used the domain names for his
website with full knowledge and intent that some Internet users seeking to find
Respondent’s website would instead be tricked into encountering his
website. Respondent’s
use of the Complainant’s domain names causes a likelihood of confusion because
it creates initial interest confusion.
See Coors Brewing Co. v. Zike, FA 104202 (Nat. Arb. Forum Mar.
15, 2002) (“A domain name for the purpose of criticism or commentary must on
its face indicate that any site to which it leads is not that of the trademark
holder but is instead a site for the criticism of or commentary on the
trademark holder. Otherwise, there is created impermissible initial interest
confusion.”); see also Aon Reed Stenhouse, Inc. et al v. Robin Beasse,
FA 104576 (Nat. Arb. Forum Mar. 22, 2002) (Registration of domain name
identical to Complainant’s mark is evidence of bad faith when the Internet user
will likely believe that an affiliation exists between Respondent and
Complainant when there is none); see also E. & J. Gallo Winery v. Spider
Webs Ltd., 286 F.3d 270 (5th Cir. 2002) (The defendant
registered and used the domain name <earnestandjuliogallo.com> for a
website critical of Gallo. The Court
found that use of a domain name identical to Gallo’s trademarked name was not
fair use and the defendant's manner of use supported a finding of bad faith).
Accordingly,
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 <stanley-proto.com>; <stanley-husky.com>;
<stanley-tools.com>; and <stanley-hardware.com> domain names be TRANSFERRED from Respondent
to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 31, 2002
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