The Complainant is New Sioux City Iron Co., of Sioux City, Iowa, United States of America, represented by McKee, Voorhees & Sease P.L.C., United States of America.
The Respondent is J.A. Romero, of St. Paul, Minnesota,
acting on behalf of Mining Auger & Tool Works, Inc. of St. Paul, Minnesota,
United States of America, which is represented by Haugen Law Firm PLLP, United
States of America.
2. The Domain Name and Registrar
The <tooldepot.com> domain name is registered
with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on January 29, 2007. On February 1, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 1, 2007, Network Solutions transmitted by email to the Center its verification confirming that Respondent is listed as the registrant for the domain name, confirming details of the registration agreements, and providing contact details for the technical and administrative contacts for the domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2007. The Response was filed with the Center on February 28, 2007.
The Center appointed Debra J. Stanek as the sole panelist
in this matter on March 12, 2007. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
4. Factual Background
Complainant has used the mark TOOL DEPOT in connection with retail store services since 1998. It owns a United States federal trademark registration for the mark TOOL DEPOT and has registered the domain name <tooldepots.net> for its website.
Respondent registered the disputed domain name, which
devolves to a website that bears a legend stating that it is “under construction,”
but also contains links to third party sites.
5. Parties’ Contentions
A. Complainant
Complainant makes the following contentions:
Complainant owns a United States federal trademark registration for the mark TOOL DEPOT for retail store services for tools, hardware, construction supplies, and home improvement supplies. The registration was issued in 2004; the earliest date of first use in interstate commerce is May 1998. The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its mark and Complainant has no relationship with Respondent.
Respondent is not known by the terms, “tool depot,” the disputed domain name, or any variations. Respondent does not offer any goods or services of its own through the <tooldepot.com> domain name. Instead, visitors to that website are presented with a page that states that the site is “under construction,” but contains links to third party sites which presumably generate revenue for the registrar.
Further, a review of the website at “www.jackhammers.com,” does not show any use of “tool depot”. A search of the United States Patent and Trademark Office database for marks owned by Mining Auger & Tool Works, Inc., which operates the “www.jackhammer.com” website, did not reveal any “tool depot” mark.
Respondent registered and is using the disputed domain names in bad faith because:
(1) Respondent’s apparent purpose was to confuse those looking for Complainant’s website by adding “.com” to Complainant’s registered mark, providing links that generate revenue for Respondent’s registrar.
(2) Respondent’s contact information connects it to the “www.jackhammers.com” website, in the same business as Complainant, suggesting that Respondent is trying to attract visitors for commercial gain by creating a likelihood of confusion with Complainant’s mark or is attempting to sell or transfer the disputed domain name to Complainant for greater consideration than the cost of registration.
B. Respondent
Mining Auger & Tool Works, Inc. makes the following contentions:
Respondent registered the disputed domain name as agent for and for the benefit of Mining Auger & Tool Works, Inc. which is the real party in interest here.
Complainant’s trademark registration is not valid.
Complainant originally applied to register the mark THE TOOL DEPOT, but subsequently amended its application - most likely in 2004 - to the mark TOOL DEPOT, thus affecting the dates of first use claimed in the original application.
Mining Auger & Tool Works, Inc. has used the mark TOOL DEPOT in connection with a bona fide offering of goods and services. It began using the mark TOOL DEPOT in the United States as early as the 1970s, many years before the date of first use claimed in Complainant’s federal trademark registration. Mining Auger & Tool Works, Inc. supports this contention with the affidavit of its Vice President and Director of Marketing, Steven Schuweiler, who has worked for the company since 1976, as well as copies of catalog pages, flyers, and order forms that use the designation TOOL DEPOT in connection with Mining Auger & Tool Works, Inc.’s products and service that predate Complainant’s use. Further, the <tooldepot.com> domain name was registered on September 26, 1996, a date which also predates Complainant’s use.
Mining Auger & Tool Works, Inc.’s rights in the TOOL DEPOT mark are superior to those of Complainant. By virtue of its prior use, Mining Auger & Tool Works, Inc. could not have registered the domain name in bad faith. By virtue of its lack of use of the domain name, it cannot be said to be using the domain name in bad faith.
Mining Auger & Tool Works, Inc. contends that Complainant is engaged in reverse domain name hijacking, citing among other things, its failure to explain the amendment of its federal trademark application, its identification of J.A. Romero as the Respondent despite having determined that Mining Auger & Tool Works, Inc. operated the “www.jackhammers.com” website, failing to disclose that Complainant does not take orders through its own “www.tooldepots.net” website, and failing to advise the Panel that it has registered the <tooldepot.mobi> domain name.
Mining Auger & Tool Works, Inc. requests that
this Panel order that Complainant’s domain names <tooldepots.net>
and <tooldepot.mobi> be transferred to Respondent.
6. Discussion and Findings
A. Procedural Matters
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” Based on the record, it appears that the Complaint correctly named as Respondent, J.A. Romaero, the registrant of record for the disputed the domain name at the time that the Complaint was filed. The Response advises that the correct spelling is “Romero.”
Mining Auger & Tool Works, Inc. is not a holder of the registration at issue; therefore it is not properly a “Respondent.” The proper Respondent - and the entity against whom relief may be obtained, see Policy, paragraph 4(i) - is J.A. Romero. While Mining Auger & Tool Works is not technically a “respondent” within the meaning of the Policy, the Panel finds that Mining Auger & Tool Work is responsible for, or the beneficial holder of, the domain name at issue. For the remainder of this decision, the Panel will use the term “Respondent” to refer to Mining Auger & Tool Works.
B. Burden of Proof
In order to prevail, Complainant must prove:
(i) The domain name is identical or confusingly similar to Complainant’s mark; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under Paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
(1) Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant has established rights in the mark TOOL DEPOT by virtue of the evidence of its federal trademark registration. Complainant has also established that the disputed domain name is confusingly similar to the TOOL DEPOT mark.
The disputed domain names incorporates Complainant’s mark in its entirety, eliminating a space between “tool” and “depot”, adding the top level domain “.com,” and using lower case. Such differences are not relevant in determining identity or confusing similarity. The gTLD, in this case “.com”, is an integral part of a domain name and is not relevant in evaluating identity or confusing similarity. Likewise, deleting a space between words is irrelevant because spaces may not be used in domain names. Nor are distinctions between the use of lower and upper case relevant.
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant’s mark.
(2) Rights or Legitimate Interests
Complainant must make a primafacie
showing that none of the three examples of rights or legitimate interests in
a domain name set forth in Paragraph 4(c) of the Policy are applicable. SeeWIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Question
2.1 (once complainant makes prima facie case, respondent has burden
of showing rights or legitimate interests in the domain name).
Establishing that Respondent has no rights or legitimate interest in the domain names - proving a negative - can be difficult. The Panel concludes that Complainant met its initial burden on this element, however, Respondent has rebutted that evidence and established that it has rights or legitimate interests in the disputed domain names.
Respondent’s submissions establish that its use of the TOOL DEPOT mark and its registration of the disputed domain name predate Complainant’s use. This falls squarely within Paragraph 4(c)(i) of the Policy, which provides that a respondent may establish rights by using “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” before learning of the dispute.
The Panel therefore finds that Respondent has rights or legitimate interests in the disputed domain name.
(3) Registered and Used in Bad Faith
As noted above, a complainant must establish each of the three elements outlined in Paragraph 4(a) of the Policy in order to prevail. Because Complainant has not established the second element, it is not necessary to address the issue of bad faith.
(4) Reverse Domain Name Hijacking
Respondent asserts that Complainant is engaged in reverse domain name hijacking. Reverse domain name hijacking is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel concludes that the Complaint was not an attempt at reverse domain name hijacking. The Panel finds the facts cited by Respondent as evidencing Complainant’s bad faith singularly unpersuasive. In particular, as discussed in Section 6.A., the Panel finds it was proper to have named J.A Romero as the “Respondent.”
Further, under the circumstances here presented, the Panel finds that there is no evidence that Complainant acted in bad faith. To the contrary, the facts share some in common with cases that involve the type of cybersquatting that the Policy is designed to address (e.g., use of a domain name that is identical to a registered mark, inaccurate -- or at least confusing - registrant information, a website that appears to generate “click-through” revenue through links to third party sites).
(5) Request for Transfer of Domain Names Registered to Complainant
Respondent also requests that the Panel order the
transfer of the domain names <tooldepots.net> and <tooldepot.mobi>
to it. Such a request is far outside the scope of this proceeding, see Policy,
paragraphs 4(i) and 5, and in light of the Panel’s views expressed above,
unwarranted.
7. Decision
For the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Date: March 26, 2006
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