The Complainant is Andreas Stihl AG & Co KG of Waiblingen, Germany, represented by McGuireWoods LLP, United States of America.
The Respondent is Rodrique Calasbo of Tabasco, Mexico.
2. The Domain Names and Registrar
The disputed domain names <stihlchainsawssales.com> and <stihlproducts.com> are registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 13, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On January 13, 2010, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on February 15, 2010. 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
The Complainant is the owner of several trademarks constituted of the word STIHL (herein the “Trademark”) used in association with several classes of wares and services along with other trademarks incorporating the word STIHL and another word such as STIHL QUICKSTOP, STIHL CUTQUICK, STIHL FORMBOSS, STIHL WOODBOSS, STIHL DUROMATIC, STIHL ROLLOMATIC, STIHL MOTOMIX and STIHL MOTOPLUS, all registered and used in association with various products such as chainsaws, oil for these saws and many other power tools as listed within the Complaint (herein the “family of Trademarks” or the “family of STIHL Trademarks”). These Trademarks have been in use for many years, some as early as 1928. The said Trademarks, according to the evidence, have been registered in the United States and in Germany as shown by the OHIM Trademark Online Search System and CTM Online Search System which are adduced in evidence as annex E to the Complaint.
Furthermore, the Complainant has registered several domain names between 1996 and 2004, namely <stihlusa.com>, <stihl.com>, <stihl.net> and <stihl.info>.
The two disputed domain names <stihlproducts.com> and <stihlchainsawssales.com> have been registered on June 19, 2009 with Registrar Dynadot. The Complainant has not authorized nor approved neither the use of its Trademarks nor the registration of the disputed domain names which incorporate the STIHL Trademark.
The Complainant, through its legal representative, sent to the Respondent, initially two letters of complaints outlining the infringement of the STIHL Trademark by the use of each disputed domain name and requesting the transfer of the two disputed domain names and thereafter follow up letters, in view of the absence of response from the Respondent, all in correspondence sent to the Respondent between June 13 and August 20, 2009.
The Respondent operates under each of the disputed domain names a website which according to the evidence of the Complainant lists various products (Annex I).
5. Parties' Contentions
A. Complainant
The Complainant represents that the disputed domain names are confusingly similar to the Complainant's Trademark STIHL in which it asserts having rights by using the said Trademark as well as their registration with the United States Patent and Trademark Office and in Germany.
The Complainant submits that various searches in data bases for trademarks under the word STIHL did not reveal any party having a relationship to the Respondent and further submits that Respondent's name Rodrique Calasbo does not bear any connection to the disputed domain names and that a Google search does not reveal any website which suggests that Respondent has established rights and legitimate interests in the disputed domain names. According to the Complainant, through its legal representative, it has sent demand letters to the Respondent objecting to the said domain names registered and used without the authorisation by the Complainant and therefore sought the transfer thereof to the Complainant.
The Complainant further submits that the disputed domain names were registered and are being used in bad faith in that the said domain names which incorporated Complainant's Trademark STIHL are confusingly similar thereto and are creating confusion as to the affiliation of Respondent's website with the Complainant.
Finally, the Complainant alleges that the Respondent is not commonly known by the disputed domain names and is not making a legitimate noncommercial or fair use of the disputed domain names.
In conclusion, the Complainant requests a decision ordering the transfer of the said domain names to the Complainant.
The Complainant has not cited any earlier UDRP decisions in support of its representations and conclusions in respect of any of the three criteria under the Policy and Rules. The references to such earlier panels' decisions cited herein have been selected by the Panel amongst those with which the Panel is familiar
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) 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
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant has in its evidence demonstrated clearly that it has for many decades used the Trademark STIHL alone and as part of several Trademarks listed herein and has furthermore registered these various Trademarks in association with several classes of products of the general nature of powered tools amongst other products and that these several Trademarks have been registered in United States and in Germany and constitute in the Panel's view a family of STIHL Trademarks. Consequently, the Panel finds that the Complainant has rights in the STIHL Trademark and in the family of STIHL Trademarks.
Since the Complainant has not adduced any evidence as to the volume of neither business under the STIHL Trademarks nor promotional expenses thereabout, the Panel is not in a position to assess the fame of the Trademarks. However, the Panel finds that the Complainant has rights in the Trademarks which are distinctive of the Complainant and benefit of substantial goodwill associated thereto by reason of the extended use, nearly a century in the United States of America and in Germany.
The dominant feature of the two disputed domain names is the presence of the distinctive term and Trademark STIHL. The addition of the descriptive words “products” in one disputed domain name and “chainsawssales” in the other do not deter one away from the confusion between these domain names and the Trademark STIHL. To the contrary, these two disputed domain names can be considered as an extension of the family of Trademarks of several words including the distinctive term STIHL as present in the Complainant's family of Trademarks commented upon herein. Such presence of confusion has been found by panels in earlier cases which the Panel adopts and follow. See Volvo Trademark Holdings AB v. Unasi, Inc.,
WIPO Case No. D2005-0556 and AT&T Corp. v. William Gormally,
WIPO Case No. D2005-0758.
The Panel determines that the two disputed domain names are confusingly similar to the Trademark STIHL and as well as to the other Trademarks within the family of Trademarks of the Complainant in which it has rights.
The first criterion has been met.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names by stating that the Respondent has never been known by the disputed domain names, is not making any legitimate noncommercial or fair use of the disputed domain names. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of Complainant's Trademarks. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant's Trademarks.
The Complainant has in separate letters to the Respondent raised the unauthorized registration and use of each of the two disputed domain names, expressed its lack of authorisation to the Respondent to register and use the said domain names and sought the transfer to it of the said disputed domain names. The Respondent did not answer any of these original letters from the Complainant's legal representative nor any of the follow up letters sent shortly thereafter. (Annex H)
Considering the distinctive character of the Trademark STIHL and the family of Trademarks and of the two domain names in dispute on the one hand and the name of the individual Respondent, Rodrique Calasbo, it is clear that there is not even appearance of relationship between the Complainant and the Respondent. The Respondent did not even try to answer or rebut the presumption raised by the Complainant in this respect.
The Panel determines that the Respondent has no rights or legitimate interests in any of the two disputed domain names.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the complainant who is the owner of the trademark or service mark or to a competitor of the 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 the 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.
It should be noted that the evidence of the circumstances of bad faith is not limited to the above.
The Complainant contends that the domain names were registered and used in bad faith. The Complainant relies on the fact that the Respondent chose two domain names where each incorporates the Trademark STIHL of the Complainant and that the said domain names are confusingly similar to the Trademarks of the Complainant and are therefore likely to create confusion as to the affiliation of the Respondent's website with the Complainant and therefore, relies on evidence of Respondent's website produced in annex I.
The Panel has already determined that the Trademark STIHL and the family of Trademarks incorporating the distinctive element STIHL of the Complainant are distinctive, well-known and have, by reason of their extended use, significant goodwill associated thereto and the Panel considers that the choice and the registration of the two disputed domain names are not the result of a coincidence. The Panel finds that these registrations of the disputed domain names were done in all likelihood to capitalize on the distinctive character of the Trademark and the goodwill associated thereto.
The Complainant asserts that the Respondent is not commonly known by the domain names and that, as illustrated in the one page screen capture of each of the domain names adduced as evidence, the Respondent is not making a legitimate noncommercial or fair use of the domain names. The one page screen capture of each of the two domain names under annex I simply lists categories of products, the Panel considers that as such it does not clearly per se support the Complainant's conclusion of use in bad faith. Considering the absence of coincidence already found by the Panel but rather the deliberate choice of the domain names which incorporate the distinctive Trademark STIHL, the Panel has taken the initiative of visiting and examining in more details the website of the Respondent under each of the said domain names.
While the page adduced as evidence (annex I) under the domain name <stihlchainsawssales.com> refers to chainsaws and other types or categories of tools such as garden tools, power tools, woodworking tools, lawnmowers, there is no trademark appearing in said page. However in subsequent pages within the same website, appearing pursuant to clicking on “chainsaws”, another page appears on which one can read under the title “Sponsored Listings”, ten listings of chainsaws along with a website address in respect of each of these listings. Upon clicking on some of these listings, namely “www.canadianTire.ca” the only brands identified for sale where Yardworks and Poulan chainsaws and similarly, under Sears chainsaws, in visiting Sears.ca, the brands were Craftsman and Poulan. It is only in visiting “www.ebay.ca” that there were STIHL chainsaws within many other brands, obviously being offered for sale by different individual or businesses.
Upon making a similar verification under the website corresponding to <stihlproducts.com>, the other disputed domain name, a similar page under power tools, reveals, again under the heading “Sponsored Listings”, 17 different listings, many of which did comprise a trademark or brand in the heading such as “Dewalt”. Again in visiting the Canadian Tire website, the only brands listed were “MasterCraft, Dewalt, Makita and Black and Decker”. There was no general “ebay.ca” link and nor any heading incorporating the Trademark STIHL.
According to several UDRP earlier decisions, such use of sponsored listings to divert Internet visitors to websites of competitors or offering for sale products of competitors of the Complainant constitute use of a domain name in bad faith.
The Panel determines that the Respondent has used the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Trademarks of the Complainant. Such a conduct constitute evidence of bad faith use in that the Respondent is trying to profit from the reputation of the Complainant's Trademarks, by increasing the traffic on its websites through the exact reproduction of a third party trademark, namely that of the Complainant.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the domain names <stihlchainsawssales.com> and <stihlproducts.com> are confusingly similar to the Complainant's Trademark;
(b) the Respondent has no rights or legitimate interests in the domain names in dispute;
(c) the two disputed domain names have been registered and are being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <stihlchainsawssales.com> and <stihlproducts.com> be transferred to the Complainant.
J. Nelson Landry Sole Panelist
Dated: February 24, 2010
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