David Brown o/b/o InspectorTools.com v.
Professional Equipment
Claim Number: FA0204000109757
PARTIES
Complainant
is David Brown o/b/o InspectorTools.com, Ventura, CA (“Complainant”) represented by Patrick W. Fletcher, of Law Offices of Patrick W. Fletcher. Respondent is Joseph Affrunti d/b/a Professional Equipment, Hauppauge, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <inspectortool.com>,
registered with BulkRegister.com, Inc.
PANEL
On
May 28, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 18, 2002; the Forum received a hard copy of the
Complaint on April 22, 2002.
On
April 19, 2002, BulkRegister.com, Inc. confirmed by e-mail to the Forum that
the domain name <inspectortool.com>
is registered with BulkRegister.com, Inc. and that Respondent is the current
registrant of the name. BulkRegister.com,
Inc. has verified that Respondent is bound by the BulkRegister.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
April 26, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 16,
2002 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@inspectortool.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 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
1. Respondent’s <inspectortool.com>
domain name is confusingly similar to Complainant’s INSPECTORTOOLS.COM
common law trademark and corresponding domain name.
2. Respondent has no rights or legitimate
interests in respect of <inspectortool.com>.
3. Respondent registered and used the
disputed domain name in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant is the registered owner of
the domain name <inspectortools.com> and asserts common law trademark
rights in the INSPECTORTOOLS.COM mark. Complainant has been using said mark in
commerce for computerized on-line retail services offering tools and related products
continuously since January 13, 2000. In addition, Complainant has conducted
extensive advertising through printed media, search engines and trade shows in
an effort to establish the INSPECTORTOOLS.COM mark as distinctive among the
public. Application serial number 78/110333 for federal registration of
Complainant’s mark is currently pending before the U.S. Patent and Trademark
Office.
Respondent registered the disputed domain
name <inspectortool.com> on January 22, 2002 and has used it to
redirect Internet users to a competing website,
<professionalequipment.com>, which offers tools and related products
identical to those offered by Complainant.
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 the 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.
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 asserts common law trademark
rights in INSPECTORTOOLS.COM. Because Respondent failed to submit a Response in
this proceeding and Complainant’s assertion proceeds unopposed, the Panel will
accept the assertion as true. See 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”).
The ICANN Policy is broad in scope;
unregistered or common law trademark or service mark rights will suffice to
support a domain name Complaint under the Policy. See BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
Complainant as the source of broadcast services over the Internet, and evidence
that there is wide recognition with the BROADCASTAMERICA.COM mark among
Internet users as to the source of broadcast services); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications).
Respondent’s <inspectortool.com>
domain name is confusingly similar to Complainant’s mark because the
deletion of a letter is inconsequential when conducting a confusingly similar
analysis. See Universal City
Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding
that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE
mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Dow Jones & Co. v. Powerclick, Inc.,
D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of
errors or changes, such as the addition of a fourth “w” or the omission of
periods or other such generic typos do not change the Respondent’s infringement
on a core trademark held by Complainant).
Accordingly, the Panel finds that Policy
¶4(a)(i) has been satisfied.
Complainant has established its rights to
and interests in the INSPECTORTOOLS.COM mark. Because Respondent has not
submitted a Response in this proceeding, the Panel may presume it has no such
rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
By infringing on Complainant’s common law
trademark and redirecting unsuspecting Internet users to a website devoted to
competing with Complainant, Respondent is not making a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent
does not have a legitimate interest in using the domain names
<caterpillarparts.com> and <caterpillarspares.com> to suggest a
connection or relationship, which does not exist, with Complainant's mark
CATERPILLAR).
Additionally, no evidence before the
Panel suggests that Respondent is commonly known as “inspectortool” or <inspectortool.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel as Joseph
Affrunti d/b/a Professional Equipment. 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); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain name, and
thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and acquired the
disputed domain name primarily for the purpose of selling, renting or otherwise
transferring the domain name registration to the Complainant who is the owner
of the common law trademark. Specifically, Respondent has offered to refrain
from using the <inspectortool.com> domain name if Complainant
refrains from using the term “Professional Equipment” in its advertising;
Respondent claims it owns trademark rights in the term. Respondent’s quid
pro quo behavior evidences bad faith under Policy ¶ 4(b)(i). See Xerox Corp. v. Imaging Solution,
D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the
domain name in the hope and expectation of being able to sell it to the
Complainant for a sum of money in excess of its out-of-pocket expenses and/or
in the hope of forcing the establishment of a business arrangement beneficial
to the Respondent); see also Crédit
Lyonnais v. Ass'n. Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding
bad faith where the Respondent agreed to transfer the domain name if the
Complainant agreed to support the Respondent’s cause but then remained silent
in completing the transfer); see generally Pocatello Idaho Auditorium Dist.
v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner.").
Given that both Complainant and Respondent are involved in the sale of
tools and related products, it is reasonable to infer that Respondent
registered and used the contested domain name in order to disrupt Complainant’s
business. This demonstrates bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
Furthermore,
Respondent registered and used the disputed domain name, which is confusingly
similar to Complainant’s mark, in order to divert Internet users searching for
Complainant’s products to a competing website. Respondent’s registration and
use of Complainant’s mark represents a deliberate attempt to benefit from a
perceived affiliation with Complainant’s products; thus, indicating 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 Respondent used the domain
name, for commercial gain, to intentionally attract users to a direct
competitor of Complainant); see also Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad
faith where Respondent registered and used an infringing domain name to attract
users to a website sponsored by Respondent).
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 <inspectortool.com>
domain name be TRANSFERRED from
Respondent to Complainant.
James P. Buchele, Panelist
Dated:
May 31, 2002
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