The Complainant is TTS Tooltechnic Systems AG & Co. of Wendlingen, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is LAWRENCE RAY, THIS DOMAIN IS FOR SALE of NEW YORK, New York, United States of America (“United States”), self-represented.
The disputed domain name <myfestool.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 21, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Respondent sent an informal email on April 23, 2019 and submitted a late Response on April 29, 2019. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process on April 23, 2019. On April 30, 2019 the Complainant wrote to the Center in connection with the late Response.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 2, 2019. 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 factual findings pertinent to the decision in this case are that:
(1) the Complainant manufactures and distributes electric and pneumatic tools by reference to the trade mark FESTOOL (the “Trade Mark”);
(2) the Trade Mark is the subject, inter alia, of United States Patent & Trademark Office (“USPTO”) Reg. No. 2511607, registered on November 27, 2001;
(3) in 2019 the Complainant began to offer its customers warranty and repair services by reference to the name, MyFestool;
(4) the disputed domain name was registered on July 17, 2012;
(5) the disputed domain name has not been used but links to the website of the domain service provider Uniregistry.com where an enquiry can be made to purchase the disputed domain name; and
(6) there is no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
As stated, a Response was due by April 21, 2019 but on April 23, 2019 the Respondent sent an informal email and on April 29, 2019 it submitted a late Response. In these circumstances the Panel has a discretion whether or not to consider the Response.
The Panel observes that whilst the Complainant wrote to the Center on April 30, 2019 in connection with the late Response it did not formally object to its admission to these administrative proceedings; rather the Complainant’s submissions were an answer to the Response.
The Panel further observes that the Response includes factual information not touched upon in the Complaint and that the Complainant’s April 30, 2019 email admits that:
“… the Complainant when filing the Complaint was not actively aware of the prior communication with the Respondent in 2013. As internal inquiries revealed, it is true that the Respondent had been contacted by the Complainant’s US subsidiary in 2013 regarding the Disputed Domain Name.”
Furthermore, the Panel notes that the Respondent petitions the Panel to find Reverse Domain Name Hijacking (“RDNH”).
In these circumstances the Panel finds it proper that the late Response should be considered, along with the retort thereto which will be referred to as the “Complainant’s Additional Submissions”.
The Complainant asserts trade mark rights in FESTOOL. It holds a national registration for the Trade Mark and submits that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because it has no trade mark rights; is not known by the disputed domain name; and the disputed domain name has not been used and is for sale.
The Complainant alleges that the Respondent registered the disputed domain name in bad faith having targeted the Complainant’s business.
The Complainant accordingly requests the Panel to order transfer of the disputed domain name.
The Respondent takes issue with the Complainant’s assertions and asks the Panel to find RDNH. In short, the Respondent asserts that it has been a long time customer of the Complainant and registered the disputed domain name, along with other related domains, with the intention to become an online reseller of the Complainant’s products.
The Respondent states that the Complainant was made aware of the Respondent’s plan to build a reseller site, and previously attempted to purchase the disputed domain name in 2013, 2014 and now again in 2019. When the Complainant was unsuccessful acquiring the disputed domain name it resorted to these administrative proceedings knowingly omitting facts in an attempt to mislead the Panel.
The Respondent states that it has made preparations to start business as an online reseller but developed severe and ongoing medical issues.
The Complainant states that in 2013 when the Complainant’s United States (“US”) subsidiary approached the Respondent regarding possible purchase of the disputed domain name the Respondent “was about … to launch a legitimate reseller website … [and] the matter was not further pursued in 2013 as the domain name … was only registered for less than one year”. However, in the six years since, the disputed domain name has not been put to legitimate use but instead has been offered for sale for a price clearly exceeding the out of pocket costs for registering the disputed domain name. Moreover, other domain names which include the Complainant’s trade mark were registered by the Respondent and are for sale, having not been used. The Complainant submits that these combined facts show the Respondent to have engaged in a pattern of registering domain names incorporating the Complainant’s trademark primarily for the purpose of selling, renting, or otherwise transferring the domain name(s) to the Complainant for consideration in excess of the Respondent’s out-of-pocket registration costs.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its USPTO registration of the Trade Mark and so the Panel finds that the Complainant has trade mark rights.
The disputed domain name places the personal pronoun “my” before the Trade Mark and appends the generic Top-Level Domain (“gTLD”) “.com”. The gTLD can be disregarded for the purposes of comparing the disputed domain name with the Trade Mark.2 The Complainant submits that the English term “my” is a common marketing supplement in Ecommerce. Any Internet user when visiting a website provided under the disputed domain name will reasonably expect to find a website commercially linked to the owner of the trade mark. The Panel accepts that reasoning and finds that the disputed domain name is confusingly similar to the Trade Mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name.3
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs data lists the disputed domain name registrant as “LAWRENCE RAY” and the registrant organization as “THIS DOMAIN IS FOR SALE”, neither of which suggests that the Respondent might be commonly known by the disputed domain name. There is no other evidence that the Respondent might be commonly known by the disputed domain name and it does not claim to be so known. There is no evidence that the Respondent has any trade mark rights. The WhoIs information promotes sale of the disputed domain name and the disputed domain name links to a website where an enquiry can be made to purchase the name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and so the onus shifts to the Respondent. The Respondent asserts that it has a legitimate interest in the disputed domain name which, based on the Response, the Panel concludes to be premised impliedly on paragraph 4(c)(i) of the Policy, or based somehow upon the past dealings between the parties.
In summary, the Respondent’s claims can be broken down as follows:
(a) sometime in early 2013 the Respondent had conversations with the Complainant’s US subsidiary’s representative, […], and its Director of Sales, […], to formulate a plan whereby the Respondent would become a reseller of the Complainant’s goods. The Respondent states that the Complainant’s US subsidiary’s representative then had a family medical emergency and the plans were derailed;
(b) in May 2013 the Complainant’s US subsidiary’s Director of Marketing approached the Respondent to acquire the disputed domain name. The Respondent instead offered the Director of Sales its complete stock of domain names which incorporated the trade mark, including the disputed domain name. Sometime later, in June 11, 2014, the Director of Sales indicated that only the disputed domain name was of interest and offered the Respondent USD 1500 cash or USD 3000 in tools or accessories for the disputed domain name. The Respondent did not accept either offer and retained the domain to continue with its ambition as a reseller; and
(c) the Respondent has made preparations to start an online reseller business but developed severe medical issues which are documented and ongoing. The Respondent states that it was acutely ill for two months at the time the Complaint was filed which contributed to the late Response.
The Panel notes that there is no evidence in support of paragraph 4(c)(i) of the Policy, nor any evidence to support the Respondent’s claim of ill health recently or of chronic sickness preventing use of the disputed domain name since 2012 when it was registered. The Panel adds that it would be absurd if the Respondent’s failure to comply with the Rules for filing a response should support its undocumented explanation as to why the disputed domain name has not been put to its intended use. The Panel finds that the Respondent has not established a right to or legitimate interest in the disputed domain name pursuant to paragraph 4(c)(i) of the Policy.
Further, the Panel notes that there is no evidence of an actual agreement that the Respondent would become a reseller of the Complainant’s goods. Indeed, the only indication that the Complainant may have acquiesced in the knowledge of the Respondent’s intention to resell the Complainant’s goods comes from the Complainant’s additional submissions. The Panel is surprised by the Complainant’s admission that in 2013 the Respondent was about to launch a “legitimate reseller website” when (i) the Complainant was “not actively aware” of those prior dealings when the Complaint was filed only shortly before, and (ii) no evidence has been forthcoming of an agreement or of any reseller control provisions, including, not least, ownership of the relevant domain name. The Panel has given this information the weight it deserves and finds that there is nothing to support a claim by the Respondent that the use of the disputed domain name for the purposes of a reseller website was endorsed by the Complainant. On the contrary, the Respondent had registered the disputed domain name and other related domain names incorporating the Trade Mark without the Complainant’s authority.
What then follows is that the Complainant’s entreaties to secure a purchase of the disputed domain name should not be characterised in the manner the Respondent seeks to do, as a bona fide negotiation between a possible buyer and a party with a legitimate interest in the disputed domain name. The Respondent does not have a legitimate interest in the disputed domain name just because it thinks that is so and the Complainant’s offer to purchase the name was merely an alternative option to these proceedings. Put another way, the offer to purchase is not to be read as the Complainant’s tacit recognition of a right to the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(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 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 online 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.”
The Complainant argues for the application of paragraph 4(b)(i) above. Its submissions are that:
“… the price of USD 22.000 requested by the Respondent for the Disputed Domain Name clearly shows that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant’s FESTOOL trademark. The fact that the Respondent has not put the Disputed Domain Name to any fair use since 2012 and at the same time is offering the Disputed Domain Name for sale for a price of USD 22.000 clearly in excess of any out-of-pocket costs or any price which would usually be paid for a domain name consisting of a purely imaginative term not referring to a well-known trademark clearly shows the Respondent’s intention to financially exploit the Complainant’s FESTOOL trademark.”
The Panel considers that a number of factors are relevant to the claim that the Respondent’s conduct falls under paragraph 4(b)(i) of the Policy. The first concerns the Respondent attempts to distance itself from the USD 22,000 price which Uniregistry.com placed on the disputed domain name. The Response states that “the respondent never had any communication with Uniregistry.com regarding the alleged price quote”. In spite of that statement, the Panel observes that the Complainant’s representatives lodged an enquiry with Uniregistry.com to purchase the disputed domain name and that on February 26, 2019 Uniregistry.com replied, stating:
“My name is […] and I am a broker with Uniregistry.com. I represent the current owner of myfestool.com. I was able to speak with the seller and based on many criteria they have determined a value of 22,000.00USD.”
The Panel is therefore asked to believe that the broker’s representations were false and the Respondent had no knowledge of the enquiry and had no input in the sale price. However, even if that were the case, the Respondent has promoted the sale of the domain name and, as long ago as in 2013, rejected an offer of USD 1500 in cash or USD 3000 in kind.
The Response goes on to state that even if a figure of USD 22,000 was put on the disputed domain name, “the respondent has a legitimate interest in the domain name and any offer to sell the domain name for a mutually agreeable price does not establish bad faith”. The Panel has already found that claim to a legitimate interest to be unfounded and now adds that there is even less evidence of a right or legitimate interest in the related domain names which the Respondent registered, being:
<ifestool.com>
<meinfestool.com>
<meinfestool.de>
<festoolpro.com>
<myfestool.info>
<profestool.com>
<profestool.info>
Those domain names were also for sale at the time of the Complaint and the Respondent had already attempted to sell them to the Complainant in 2013. Furthermore, the Panel notes that two of the domain names use the German language variation of “myfestool” which would seem of little commercial use to an aspiring reseller located in the United States.
In the final analysis, the Response does not prove any agreement (explicit or implied) that the Respondent was to become a reseller of the Complainant’s goods. There is no corroborating evidence of the alleged conversations with either subsidiary’s Director of Marketing or Director of Sales and the alleged formulation of a reseller plan is unsubstantiated. The later email correspondence with the Director od Sales was only concerned with possible purchase of the disputed domain name and the assertion that the Respondent declined the USD 1500 cash offer for the disputed domain name because it wished to retain it for use as a reseller is not supported by any such use, or preparations for such use, over the following five-year period.
The Panel finds registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(i) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied the third and final element of the Policy.
For 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 <myfestool.com> be transferred to the Complainant.
It follows that the Panel need not consider the Respondent’s RDNH claim.
Debrett G. Lyons
Sole Panelist
Date: May 13, 2019
1 See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See section 1.11.1 of the WIPO Overview 3.0.
3 See, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Addendum: following the Panel Decision in this case, the parties informed WIPO that they reached an agreement.