Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA
Case No. D2008-0144
1. The Parties
Complainant is Chicago Pneumatic Tool Company LLC, of the United States of America, represented by Atlas Copco North America LLC, United States of America.
Respondent is Texas International Property Associates- NA NA, of the United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chicagopnumatic.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2008. On January 31, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue, followed by multiple reminder e-mails between February 1 and February 11, 2008. The Center received no registrar verification from the registrar Compana LLC in this matter. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2008. The Response was filed with the Center on March 6, 2008.
The Center appointed Andrew Mansfield as the sole panelist in this matter on March 20, 2008. 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 a United States registered trademark for the word mark CHICAGO PNEUMATIC, registration number 1879515, dated February 21, 1995. This trademark was issued in connection with power operated impact wrenches, power operated screwdrivers, power operated nutrunners, power operated compression tools, power drills, power operated abrasive tools, power operated hammers, power operated demolition tools, power drills for rock, power operated tampers, power operated vibrating machines, power operated pumps, stationary motors for power operated machines and tools, air compressors and air lines, mechanical balancers, power operated hoists, power operated cutting tools, power operated riveting tools, riveting bucking bars, power operated etching tools, power operated saws, power operated hedge trimmers, hydraulic boom mounted concrete breakers, hydraulic pumps, power operated jacks, power operated polishing tools, and accessories for any of the foregoing.
The disputed domain name was first created on November 30, 2004.
5. Parties’ Contentions
A. Complainant
Complainant alleges that it is in the business of developing, assembling, and marketing power tools and equipment, including but not limited to pneumatic industrial tools, construction tools, demolition equipment, vehicle service tools, and assembly stems tools. Complainant alleges that its products are sold through a worldwide sales and service network. Complainant’s primary website is located at “www.chicagopneumatic.com”.
Complainant alleges that it obtained a United States registered trademark for the word mark CHICAGO PNEUMATIC in 1995 in connection with a wide range of equipment identified in section 4, above. Complainant further alleges that it had used the trademark CHICAGO PNEUMATIC in commerce since 1919.
Complainant alleges that the disputed domain name <chicagopnumatic.com> is identical or confusingly similar to the CHICAGO PNEUMATIC trademark, as well as Complainant’s corporate name, and the Complainant’s domain name, <chicagopneumatic.com>. Complainant identifies one minor difference between the disputed domain name and its trademark, corporate name, and the domain name used by Complainant. That one difference is that the disputed domain name is misspelled; the disputed domain name is missing an “e” in “pneumatic”. In addition to basing the Complaint on the alleged similarity between the disputed domain name and Complainant’s trademark, Complainant alleges that its corporate name, Chicago Pneumatic, is also a protected legitimate interest under the Policy and the Supplemental Rules. Complainant points out that the disputed domain name is identical or confusingly similar to its corporate name.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name. Complainant alleges that Respondent is in no way affiliated or associated with Complainant. Complainant alleges that Respondent is not licensed or authorized to use the CHICAGO PNEUMATIC trademark. Complainant concludes that Respondent has no legitimate interest in the disputed domain name.
Complainant further alleges that it is not aware that Respondent has used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of this dispute. Instead of any such bona fide use, Complainant informs the Panel that Respondent has used the website at the disputed domain name as a landing page or parking page that consists of a series of sponsored results, related searches, and links, including, but not limited to sites through which products of Complainant’s competitors are marketed. Complainant alleges that Respondent is neither known by the disputed domain name nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleges that it is incumbent upon Respondent to come forward and present evidence to the Panel rebutting Complainant’s assertions concerning Respondent’s lack of rights or legitimate interests. Complainant argues that Respondent must rebut the presumption created by Complainant’s allegations because such information is uniquely in the knowledge and control of Respondent.
Complainant alleges that Respondent has registered and is using the disputed domain in bad faith. Complainant first alleges that Respondent has registered numerous domain names that incorporate third-party trademarks and/or corporate names. Complainant points out that Respondent has been subject to numerous complaints under the Policy. Complainant calls Respondent’s conduct a “pattern” of registering names containing or confusingly similar to other party’s trademarks and/or corporate names.
Complainant alleges that Respondent’s bad faith is exemplified by the conduct described in section 4(b)(iv) of the Policy. Respondent is, according to Complainant, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or products on that website. Complainant alleges that Respondent is “using” the domain name by diverting traffic to other on-line locations for commercial gain. Complainant further alleges that a finding of bad faith use and registration may not be defeated even if Respondent were to show that a third party selects the links on the website at the disputed domain name or if a third party controls that website. Complainant alleges that Respondent is responsible as the registered owner of the domain name.
Complainant further supports its claim that Respondent registered and is using the domain name in bad faith by pointing out that the slight misspelling found in the disputed domain name gives rise to a strong inference that Respondent had actual knowledge of Complainant’s trademark, CHICAGO PNEUMATIC, and/or identical corporate name.
B. Respondent
Respondent filed a short document as a “Response” to Complainant’s allegations. In that Response, Respondent agrees to the relief requested by Complainant. Respondent calls this agreement which it presents in the Response an offer of a “unilateral consent to transfer” and disputes that such an offer is an admission to the three elements of section 4(a) of the Policy. Respondent provides references to prior Panel decisions that have proceeded in one of at least three ways in the face of such a “unilateral consent to transfer”. First, some panels have granted the relief requested by complainant without reviewing the facts supporting the claim. Second, some panels have taken such an offer as an admission that the three elements of paragraph 4(a) of the Policy are satisfied. Third, some panels have proceeded to analyze complainant’s evidence independently of such a “unilateral consent to transfer”. Respondent urges the Panel to follow the prior panels that have ordered transfer without reviewing the evidence submitted by Complainants and without making findings as to whether the elements of paragraph 4(a) of the Policy are satisfied. Respondent urges this outcome for reasons of economy and expeditiousness.
6. Discussion and Findings
The Panel must first address Respondent’s arguments concerning Respondent’s “consent” to transfer the disputed domain name to Complainant. Respondent requests that this Panel order the transfer of the disputed domain name without investigating the evidence offered by Complainant and without making findings as to the trademark or trademarks at issue, the identity or confusing similarity of the dispute domain name to the trademark or trademarks, the rights or legitimate interests of the Respondent to the disputed domain name, or the bad faith of the registration or use of the disputed domain name by Respondent. The Panel declines Respondent’s request.
Several prior Panels have been presented with such a consent to transfer. Recently, the Panel in Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, ordered the transfer of the disputed domain name but declined, when presented with a consent to transfer from respondent, to not issue findings as to the merits of complainant’s case. In Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909, the panel, when presented with a consent to transfer the domain name, ordered the transfer of the domain name but declined to do so without independently investigating complainant’s proof. The panel explained its rationale at great length. The panel found:
“[T]here is a wider interest in the activities of those that have registered domain names contrary to the terms of the Policy, becoming publicly known. The relevant facts may be relevant to future proceedings involving different complainants (see, for example, the comments of the panel to this effect in Brownells, Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1211). In this respect, the Panel also notes that it has now become common practice among some cybersquatters to offer to transfer a domain name without payment whenever proceedings are commenced against it under the Policy. The Respondent knows that the cost associated with the commencement of proceedings may of themselves dissuade the rights holder from commencing proceedings. It also knows that if a rights holder does commence proceedings, its offer, which carries with it the prospect of the domain name being quickly transferred, the return of some fees and the avoidance of the risks inherent in the matter proceeding to a panel, may prove commercially irresistible to many Complainants. In this way the Respondent is able to maintain a “clean record” so far as the rest of the world is concerned.”
Other panels have also refused to simply “rubber stamp” a “consent to transfer” offered by a respondent for the first time in a response. See, e.g., Brownells, Inc. v. Texas International Property Associates,
WIPO Case No. 2007-1211; Sassybax, L.L.C. v. Texas International Property Associates,
WIPO Case No. 2007-1190. As pointed out by Respondent, some panels have found that a “consent to transfer” is an admission by respondent that the elements of paragraph 4(a) of the Policy have been met and that complainant’s requested relief is appropriate. See, e.g., Qosina Corporation v. Qosmedix Group,
WIPO Case No. D2003-0620; DESOTEC N.V. v. Jacobi Carbons AB,
WIPO Case No. D2000-1398. At least three panels have, despite this recent apparent consensus against such a practice, ordered the transfer of a disputed domain name on the basis of a consent to transfer proffered by a respondent in the response. The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132; Williams Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207; SLUMBERLAND FRANCE v. CHADIA ACOHURI,
WIPO Case No. D2000-0195. This Panel finds that the alleged basis cited in those prior panel decisions – the Panel’s authority under Rule 10(c) to make sure the proceeding occurs with “due expedition” – is not a valid basis for ordering a transfer without investigating Complainant’s evidence. Rule 10(c) was not intended to bypass the desire of a complainant to obtain a decision that investigates the evidence offered by complainant and makes findings on the elements of paragraph 4(a). Rule 10(c) appears to have been designed to make sure that panels issue decisions quickly and without undue delay. The Panel’s authority under Rule 17 to terminate the proceedings when the parties have agreed to settlement is likewise not implicated under this matter. Complainant has simply not agreed to settle, therefore the “parties” have not agreed to settle.
The Panel refuses to either order the transfer of the disputed domain without examining each element of paragraph 4(a) or to hold that Respondent’s consent to transfer constitutes an admission as to Complainant having met its burden of proof under each element of paragraph 4(a). Instead, the Panel examines the case as if Respondent had defaulted (since Respondent generally states that it does not admit to any of Complainant’s allegations nor did it provide a single countervailing item of evidence in its Response), examining whether Complainant has met its burden of proof under each element of paragraph 4(a) of the Policy. Those elements are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <chicagopnumatic.com> is confusingly similar to the Complainant’s United States registered trademark, CHICAGO PNEUMATIC. The disputed domain name varies from Complainant’s trademark by only one letter. Such a slight variation in a domain name that distinguish the domain name from a trademark is often referred to as “typosquatting”. See, e.g., Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,
WIPO Case No. D2006-0517; Wachovia Corporation v. American Consumers First,
WIPO Case No. D2004-0150.
For these reasons, Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not, to the best of Complainant’s knowledge, the name of Respondent. Complainant asserts that it has not authorized Respondent to use the mark. The Panel is satisfied that Complainant has made out an initial prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain name. Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the facts indicate that Respondent registered and used the disputed domain name in bad faith. Respondent’s registration and use of the disputed domain name is similar to the example provided in paragraph 4(b)(iv) of the Policy. Respondent appears to have intentionally attempted to attract, for commercial gain, Internet users to its website or on-line location. That attempt was based on the likelihood of confusion between the disputed domain name and Complainant’s trademark, CHICAGO PNEUMATIC.
For this reason, Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <chicagopnumatic.com> be transferred to Complainant.
Andrew Mansfield Sole Panelist
Dated: April 3, 2008
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