The Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America (“United States”), represented by Stanley Black & Decker, United Kingdom of Great Britain and Northern Ireland.
The Respondent is The Trustee for Froude Family Trust of Rowville, Victoria, Australia, self-represented.
The disputed domain names <bostitch.com.au> and <bostitch.net.au> (the “Disputed Domain Names”) are registered with Web Address Registration Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2016. On March 3, 2016, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Names. On March 4, 2016, 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”), 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 proceeding commenced on March 16, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2016. The Response was filed with the Center on March 29, 2016.
The Center appointed John Swinson as the sole panelist in this matter on April 20, 2016. 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 is Stanley Black & Decker, Inc, a Fortune 500 company headquartered in the United States which provides hand tools, power tools, security solutions, engineering fastening systems and infrastructure solutions. The Complainant was formed in 2010 from a merger of two companies which are each over 100 years old. The Complainant’s parent company had a global revenue of USD 11.2 billion in 2015.
The Complainant owns the Bostitch brand (derived from the Boston Wire Stitch Company). The Complainant states that it owns 360 registered trade marks incorporating the term BOSTITCH in over 100 countries around the world. The Complainant has provided evidence of four Australian registered trade marks for BOSTITCH (the “Trade Mark”), the earliest of which was registered in 1929. The Trade Mark was registered in the United States on October 26, 1920.
The Respondent is the Trustee for Froude Family Trust. The Respondent’s representative, Andrew Froude, states that he is a small business owner who intends on selling the Complainant’s products online as part of his business.
The Respondent registered the Disputed Domain Names on June 8, 2014.
The website at <bostitch.com.au> displays an “under construction” notice. There has been no other content at this Disputed Domain Name since it was registered. The Disputed Domain Name <bostitch.net.au> redirects to <bostitch.com.au>.
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has a large number of registered trade marks which incorporate the term BOSTITCH. The Disputed Domain Names are identical to the Trade Mark.
Rights or Legitimate Interests
The Respondent is not offering any goods or services under the Disputed Domain Names, and there is no active website associated with either of the Disputed Domain Names.
A legitimate or bona fide use of the Disputed Domain Names would require genuine Bostitch products to be offered for sale at the Disputed Domain Names. As such, the Respondent is purporting to be either the owner of the Trade Mark or in some way associated with the Trade Mark, neither of which is the case.
The Respondent has stated in email correspondence that the Disputed Domain Names were registered “with the sole intent to market and sell Bostitch branded product”. However, the Respondent is not, and has never been, a trade customer of the Complainant.
The Respondent fails to accurately disclose his relationship with the Complainant. This creates a false suggestion that the Respondent is the owner or authorized user of the Trade Mark, or that the websites at the Disputed Domain Names are authorized websites of the Complainant.
Registered or Subsequently Used in Bad Faith
The Complainant has not authorized the Respondent to use the Disputed Domain Names or to trade under the Trade Mark.
The Complainant infers that the Respondent is benefitting from the value of the Trade Mark, in which case the Respondent has registered the Disputed Domain Names in bad faith. Alternatively, the Respondent is using the Trade Mark with the intention to disrupt the Complainant’s business, which is also evidence of bad faith.
The Complainant offered to purchase the Disputed Domain Names from the Respondent for the amount of the associated registration fees. The Respondent requested compensation of AUD 17,670 to cover business establishment costs and loss of potential income. This shows the Respondent is seeking to sell the Disputed Domain Names for valuable consideration in excess of the Respondent’s out of pocket costs directly associated with the Disputed Domain Names.
As there has been no active website at either of the Disputed Domain Names since their registration, the Complainant infers that the Respondent acquired the Disputed Domain Names primarily for the purpose of selling them for a profit.
The Respondent submitted a Response which does not contain the required certification nor formally address the elements of the Policy. The following submissions are relevant:
- The Complainant has not provided all relevant email correspondence in relation to the sale of the Disputed Domain Names.
- The Respondent has not used any of the Complainant’s branding (including logos, names and colors) on the website at the Disputed Domain Names, and the Respondent has not otherwise given the impression that the Disputed Domain Names are owned by the Complainant.
- The Respondent has never had any intention to disrupt the Complainant’s business. The aim was to build his business through the sale of Bostitch products.
- The Disputed Domain Names were registered with the sole intention of making a profit from the online sale of Bostitch products.
- The Complainant’s assertions that the Respondent has done nothing with the Disputed Domain Names is incorrect. The Respondent is testing and developing websites offline and will upload those websites when they are complete.
- The Trade Mark is not registered in class 35 (in relation to business management, advertising, etc). As such, the Respondent is free to use the Trade Mark on the Internet for the advertising or promotion of products.
- The Complainant has been operating in Australia for many years, and could have registered the Disputed Domain Names themselves during that time.
- The Respondent no longer intends to sell any of the Complainant’s products, and now only wishes to be compensated for any transfer of the Disputed Domain Names to the Complainant.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a name, 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 Names; and
(iii) the Disputed Domain Names have been registered or have subsequently been used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
The Disputed Domain Names wholly incorporate the Trade Mark, with no additional words or letters. The Disputed Domain Names are identical to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case, which the Respondent has not provided sufficient information to rebut.
The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Respondent states that he intended to use the Disputed Domain Names for the purpose of selling the Complainant’s products as an unauthorized reseller. The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to register or use the Disputed Domain Names. However, in some circumstances, such use (even if unauthorized) would confer rights or legitimate interests (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The website to which both of the Disputed Domain Names resolves is a blank page containing the statement “Under Construction”. The Respondent has provided no meaningful evidence in his Response of his preparations to run an online store (such as a business plan, screen shots of the website under development, etc.), nor any convincing reason as to why such preparations have been underway for almost two years.
The fact that the Disputed Domain Names were available to the public for registration is irrelevant. Brand owners should not be required to defensively register every conceivable variation of each of their brands in every top level domain just to prevent opportunistic third parties from doing so.
Further, the Respondent has stated in his Response that he no longer has any intention to sell the Complainant’s products.
In these circumstances, the Respondent has not provided sufficient evidence of his rights to or legitimate interests in the Disputed Domain Names. The Complainant on balance succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Names in bad faith.
The Complainant has developed a significant global reputation in the Trade Mark, which is clear from the fact that its trade mark registrations date back to 1920 in the United States and 1929 in Australia.
The Respondent has admitted that he registered the Disputed Domain Names for the purpose of selling the Complainant’s products. In doing so, the Respondent intended to trade off the Complainant’s valuable and longstanding reputation in the Trade Mark. The Respondent is not an authorized reseller or trade customer of the Complainant. This is also evidence of registration of the Disputed Domain Names in bad faith in this case.
A finding of registration in bad faith is sufficient for a finding of bad faith under the Policy. The Complainant succeeds on the third element of the Policy.
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 Names, <bostitch.com.au> and <bostitch.net.au>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 4, 2016