Seco
Tools AB v.
Claim Number: FA0903001254882
Complainant is Seco
Tools AB (“Complainant”), represented by Jennifer L Dean, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <secotool.com>, registered with DirectNIC, LTD
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 1, 2009.
On March 30, 2009, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <secotool.com> domain name is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 April 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 2009 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@secotool.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <secotool.com> domain name is confusingly similar to Complainant’s SECO mark.
2. Respondent does not have any rights or legitimate interests in the <secotool.com> domain name.
3. Respondent registered and used the <secotool.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seco Tools AB, provides branded milling, turning, drilling, and holding tool systems worldwide in more than fifty countries. Complainant has registered its SECO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,079,715 issued December 20, 1977) and other governmental trademark authorities worldwide.
Respondent registered the <secotool.com> domain name on June 22, 2005. The disputed domain name resolves to a website that displays third-party advertisements for Complainant’s direct competitors.
Respondent has also been the respondent in other UDRP
proceedings in which the disputed domain names were transferred to the
respective complainants in those cases. See, e.g., C.R. Bard, Inc. & BCR, Inc. v. Belize Domain WHOIS Serv. Lt, FA
979990 (Nat. Arb. Forum June 18, 2007); see
also Enter. Rent-A-Car Co. v. Whois Serv. c/o
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.
The Panel finds that Complainant’s registration of the SECO
mark with the USPTO confers sufficient rights in the mark upon Complainant under
Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”).
Respondent’s disputed <secotool.com>
domain name contains Complainant’s mark, as well as the descriptive term “tool”
and the generic top-level domain “.com.”
The Panel takes strong note of the fact that the addition of the
top-level domain is immaterial under the Policy. See
Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis). Moreover,
the addition of the term “tool,” which clearly relates to Complainant’s main
product, actually heightens the resulting confusing similarity between the
disputed domain name and the mark. See Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term
“security” to the complainant’s VANCE mark, which described the complainant’s
business, the respondent “very significantly increased” the likelihood of
confusion with the complainant’s mark). Therefore, the Panel easily finds that
the disputed domain name is confusingly similar to the mark under Policy ¶
4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has set forth sufficient allegations supporting a prima facie case, and thus Respondent bears the burden of demonstrating that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also 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.”).
Respondent’s registrant listing in the WHOIS information is
“Belize Domain WHOIS Service Lt.” Without any evidence to contradict this
finding, the Panel therefore holds that Respondent is not, nor has ever been,
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also
Respondent’s disputed domain name resolves to a click-through
website advertising Complainant’s direct competitors via hyperlinks, presumably
for Respondent’s commercial benefit. The
Panel therefore finds that Respondent has failed in creating a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is
blank but for links to other websites, is not a legitimate use of the domain
names); see also Disney Enters., Inc. v.
Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the
operation of a pay-per-click website at a confusingly similar domain name was
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has also been the respondent in other UDRP
proceedings in which the disputed domain names were transferred to the
respective complainants in those cases. See, e.g., C.R. Bard, Inc. & BCR, Inc. v. Belize Domain WHOIS Serv. Lt, FA
979990 (Nat. Arb. Forum June 18, 2007); see
also Enter. Rent-A-Car Co. v. Whois Serv. c/o
The Panel also finds that Respondent’s registration and usage
of the disputed domain name to operate an Internet billboard of sorts for
Complainant’s direct competitors disrupts Complainant’s business and therefore
constitutes bad faith under Policy ¶ 4(b)(iii).
See David
Finally, the Panel finds that Respondent’s commercial gain
from the receipt of referral fees via the click-through website was intentional
and designed to engender confusion among Internet users as to Complainant’s
affiliation with, and sponsorship of, the disputed domain name and
corresponding website. Therefore, the
Panel finds that Respondent both registered and is using the disputed domain
name in bad faith under Policy ¶ 4(b)(iv).
See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <secotool.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 8, 2009
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