The Complainant is Klein Tools, Inc. of Adelaide, South Australia, Australia represented by Minter Ellison, Australia.
The Respondent is The trustee for Topp Family Trust of Mornington, Victoria, Australia.
The disputed domain name <kleintools.com.au> is registered with Web Address Registration Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 9, 2013, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On September 16, 2013, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.
The Center appointed Simon Minahan as the sole panelist in this matter on October 21, 2013. 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.
The Complainant holds various trade marks including word marks and marks incorporating the words “”Klein” and “Klein Tools” with various logos which are registered both in the United States of America and Australia. It also has registrations for the domain names <kleintools.com> and <klein-tools.com>.
The Complainant conducts an international business of distribution and sale of hand tools and safety gear by reference to the trade marks KLEIN and KLEIN TOOLS either with or without logos and has done so since at least the 1970’s.
The Complainant has significant reputation and goodwill in the KLEIN and KLEIN TOOLS trademarks.
The Respondent has no commercial relationship with the Complainant and has not been authorized or permitted to make any use of the KLEIN or KLEIN TOOLS trademarks. The Respondent has not been authorized by the Complainant to register or use the disputed domain name. The Respondent has no registered trade mark for “Klein” or “Klein Tools” or any variant of these terms.
The Complainant contends that the disputed domain name is identical or confusingly similar to the KLEIN and KLEIN TOOLS trademarks which are to be considered, for the purposes of making a determination under the Policy, without regard for the graphic elements of the registered marks.
Further the Complainant contends that there is no evidence of any use of or entitlement to the KLEIN or KLEIN TOOLS trade marks by the Respondent and that it should be inferred from the established and widespread use of the marks by the Complainant that the Respondent deliberately adopted the mark in the disputed domain name.
Finally the Complainant contends that the deliberate adoption and incorporation of the Complainant’s trade marks in the disputed domain name taken together with the passive holding of the disputed domain name by the Respondent constitute evidence of bad faith registration or use within the meaning of the Policy.
The Respondent did not file any response.
On the basis of the uncontested facts set out above and reasoning and findings below, the Panel considers that the Complainant has made out its complaint.
There is no doubt, in the Panel’s view that the disputed domain name is, at least, confusingly similar to the Complainant’s trade marks.
Indeed, if one excludes the graphic elements of the trade marks (e.g. Rainbow Sandals, Inc. v. Malua Point Holdings Pty Limited, Anthony Brown / Malua Point Holdings Pty Limited a/k/a Malua Point Merchants, WIPO Case No. DAU2013-0014) and the TLD identifier component of the disputed domain name (e.g. Aous Uweyda v. Abdallah Sheet, NAF Claim No. FA0306000165119 and Universal City Studios, Inc. v. G.A.B. Enter, WIPO Case No. D2000-04161) – an approach consistent with countless orthodox decisions under the Policy – then the disputed domain name is arguably identical with at least the KLEIN TOOLS trade mark.
The Panel accepts the uncontroverted evidence of the Complainant that it knows of no history of use by the Respondent or rights of legitimate interests in the Respondent to use the KLEIN or KLEIN TOOLS trademarks. It further notes and accepts that under paragraph 4(a)(ii) of the Policy this set of circumstances shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
The Respondent has filed no evidence or submissions and so has not discharged this burden and so the Panel finds it has no rights or legitimate interests in the disputed domain name.
Further, for completeness, the Panel accepts the Complainant’s contention that the Respondent knew of the Complainant’s trademarks when the disputed domain name was registered and that must have been deliberately done in knowledge that it had no rights or legitimate interests to the disputed domain name (e.g. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds and holds that, in the premises of the uncontroverted evidence in this case, the Respondent has registered and is, by its passive holding, using the disputed domain name in bad faith. In support of these contentions it cites previous UDRP decisions Comercia Inc v. Hiroshy, Inc. WIPO Case No. D2004-0615 and Telstra Corporation Ltd, v Nuclear Marshmallows WIPO Case No. D2000–0003.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kleintools.com.au> be transferred to the Complainant.
Simon Minahan
Sole Panelist
Date: October 22, 2013
1 The Panel notes that principles determined under the Uniform Dispute Resolution Policy (UDRP) are also relevant in these proceedings given that the Policy is an adaptation of the UDRP.