Westmore · UDRP DecisionDestacoxpress.com
The Panel ordered transfer of <destacoxpress.com>. It found the domain confusingly similar to the licensed DESTACO and DE-STA-CO marks, that the Respondent lacked rights or legitimate interests, and that the domain was registered and used in bad faith to attract Internet users for commercial gain by creating confusion concerning the source or endorsement of a website advertising purported DESTACO products.
The timeline behind destacoxpress.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
This decision illustrates that a domain combining a distinctive coined mark with a promotional term may remain confusingly similar, particularly where the associated website directly advertises the trademark owner’s products. The Panel’s bad-faith analysis did not depend on proving that the advertised goods were counterfeit; the unauthorized use of the mark and website content to create commercial source or endorsement confusion was sufficient.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION DE-STA-CO v. PF X, Shen Zhen Teamtop Info Tech Co., Ltd Case No. D2014-0127 1. The Parties The Complainant is DE-STA-CO of Auburn Hills, Michigan, United States of America (the “USA”), represented by Shanghai Patent & Trademark Law Office, LLC, China. The Respondent is PF X, Shen Zhen Teamtop Info Tech Co. Ltd. of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar The disputed domain name <destacoxpress.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2014, the Registrar 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 February 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2014. The Center appointed Alistair Payne as the sole panelist in this matter on March 6, 2014. 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 a division of Dover Fluid Management, Inc. and was founded in 1915. The Complainant manufactures and supports clamping, gripping, transferring and robotic tooling solutions for workplace and flexible automation needs. Delaware Capital Formation, Inc. (“DCF”) is an affiliate of Dover Corporation, whose major responsibility is to centralize and hold trade mark portfolios for Dover’s subsidiaries, including for the Complainant, and it owns and licenses to the Complainant the DE-STA-CO portfolio of trademarks, including combined word and device marks including US trade mark number 7361842 for DESTACO and device filed on September 8, 1986, Chinese trade mark registration number 1455051 for DESTACO filed on February 1, 1999 and also United Kingdom word mark registration number 863206 for DESTACO dating from April 22, 1966. The Complainant operates a website for its business at “www.destaco.com”, registered on September 20, 1996. The Respondent registered the disputed domain name on June 6, 2012. 5. Parties’ Contentions A. Complainant The Complainant submits that it has substantial rights and interests in the DESTACO marks as noted above and has a long and established usage of the mark in the USA and elsewhere since 1965 in connection, in particular with its clamping, gripping, transferring and robotic tooling solutions. It says that the disputed domain name is confusingly similar to its mark because the “Destaco” element of the disputed domain name is the distinctive part for Internet users and the “Xpress” element is generic and does not identify the website information provider. As far as legitimate rights are concerned, the Complainant submits that there is no governmental record of registered trademark rights for “DestacoXpress” in relation to the Respondent in any major industrial country, including in the USA or in China. In addition, it says that there is no business relationship between the Complainant and the Respondent in any industrial country. The Complainant notes that the Respondent’s website refers to the Complainant’s Destaco products and in fact states that “DestacoXpress” is a kind of bundle package of Destaco products. The Complainant says that this misrepresents to Internet users that the Respondent has some relationship with the Complainant or is somehow authorised by the Complainant when this is not the case. The Complainant submits that the Respondent registered the disputed domain name on June 6, 2012, many years after the Complainant first used its DESTACO mark and long after the Complainant registered its <destaco.com> domain name on September 20, 1996. The Complainant submits that the products advertised on the Respondent’s website at the disputed domain name are clearly indicated as being Destaco products and notes in this regard the statement “We have taken Destaco’s TOP 40 models and bundled them in a package we call DestacoXpress”.The Complainant further argues that the Respondent uses a large volume of content related to the Complainant’s name, brand, product profile, history, product photos, all of which unavoidably mislead Internet visitors to believe that the Respondent’s website is associated with the Complainant. In addition the Complainant asserts that the genuine nature of the Destaco products allegedly supplied by the Respondent is in doubt as it has never had any business dealings with the Respondent, does not know from where the Respondent sources its products and notes a link from the website to another manufacturer with which it has no connection. Overall the Complainant submits that the Respondent registered and is using the disputed domain name to lure Internet users to its website thinking that the Complainant’s products are available there, but is really selling its own or alternative products to those customers without the Complainant’s authorisation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that an affiliate of the group in which Dover Fluid Management, Inc. is a member, holds intellectual property rights on behalf of the group and validly licenses Dover Fluid Management, Inc. and its DE-STA-CO division, the Complainant, to use and enforce the DESTACO trade marks including US combined word and trade registration number 7361842 for DESTACO and device filed on September 8, 1986 and the similar Chinese trade mark registration 1455051 for DESTACO and device filed on February 1, 1999 and also word mark registration for DESTACO such as United Kingdom registration 863206 for the word mark DESTACO dating from April 22, 1964. It is apparent that the Complainant has made extensive use of its portfolio of marks incorporating the DESTACO or DE‑STA‑CO marks for many years. The disputed domain name wholly incorporates the DESTACO mark and adds the additional “xpress” element. The Panel finds that the dominant element of the disputed domain name is the DESTACO mark which is a coined term that has no meaning in the English language and is therefore quite distinctive and is also the first and primary element of the domain name. The addition of the term “xpress” that is obviously intended to mean “express” or “speedy” does not change the overall impression that the disputed domain name gives, namely that it is concerned with the DESTACO mark and products under that brand. Whether this comparison is made between the disputed domain name and the DESTACO mark or the hyphenated DE-STA-CO mark makes no difference in the Panel’s view as the disputed domain name is confusingly similar to either variation of the mark. The Panel also notes the Complainants’ contentions that the term “DestacoXpress” has been used by the Complainant in its brochures to promote its products in different languages. As a consequence, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has demonstrated rights as set out above and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant asserts that it has never authorised the Respondent to use any of its marks and nor has it entered into any business arrangement with the Respondent. There is no evidence before the Panel that the Respondent has any rights in the disputed domain name or in its constituent elements. It appears to the Panel that the Respondent is attempting to advertise products on its website at the disputed domain name as Destaco products and notes in particular that it makes reference as follows: “We have taken Destaco’s TOP 40 models and bundled them in a package we call DestacoXpress.”There are other references on the website extracts submitted by the Complainant which reinforce this view that the references on the site are to the Complainant’s products. For example there is a highlighted reference to “Destaco’s Top 40 Toggle Clamps” accompanied by depictions of the Complainant’s products. Although the Complainant is unsure from where these products come or whether they may be copies, the impression remains that the Respondent is using the disputed domain name for the illegitimate purpose of attracting Internet users to its website by creating confusion as to the source or endorsement of the website in order to sell these products to customers without the Complainant’s authority. In these circumstances, considering the discussion under bad faith below and considering that the Respondent has not sought to rebut the case against it under this head, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name in 2012, many years after the Complainant first commence used of its DESTACO or DE-STA-CO portfolio of trade marks. The Panel notes that the Respondent is based in China and even in that jurisdiction the United States based Complainant owns registered trade mark rights dating back to 1999. In the circumstances as noted under the second element above that the website at the disputed domain name makes express reference to the Complainant’s DESTACO mark and products, the Panel infers that the Respondent was well aware of the Complainant’s products when it registered the disputed domain name and in fact did so precisely for the purpose of attracting Internet users looking for the Complainant’s products to its website. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. Under paragraph 4(b)(iv) of the Policy, evidence that the Respondent has intentionally used the disputed domain name in order to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark is evidence of both registration and use in bad faith. In this case the Respondent has used the disputed domain name which wholly incorporates the Complainant’s DESTACO mark for the purposes of attracting Internet users to its website with the apparent purpose of selling them products under the DESTACO mark and misleading Internet users to believe that the Respondent’s website is associated with the Complainant. It is not clear from where it acquires these items nor whether they are real or unauthorized copies, however it is apparent to the Panel that the Respondent is attempting to divert Internet users who are looking for the Complainant’s products or website, to its own website by creating a likelihood of confusion with the Complainant’s mark and for commercial purposes without the Complainant’s authority and that this amounts to use of the disputed domain name in bad faith. Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element of the Policy. 7. Decision 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 <destacoxpress.com> be transferred to the Complainant. Alistair Payne Sole Panelist Date: March 20, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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