Westmore · UDRP DecisionDewaltworkwear.com
The Panel ordered transfer of <dewaltworkwear.com>. It found the domain confusingly similar to the Complainant’s DEWALT mark because it incorporated the mark in full with the descriptive term “workwear.” The Respondent had no demonstrated rights or legitimate interests. Bad faith registration and use were established from the fame of the mark, the domain’s substantially inoperable and for-sale use, an offer to sell it for an amount exceeding registration costs, and the Respondent’s pattern of registering domains incorporating third-party famous marks.
The timeline behind dewaltworkwear.com
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This decision illustrates a cumulative bad-faith analysis involving a famous mark combined with a product-related descriptive term, a substantially inactive domain presented for sale, a high sale demand, and a pattern of other trademark-formative registrations. It also shows that a respondent’s procedural language request does not substitute for a substantive response or evidence addressing the UDRP elements.
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 Stanley Black & Decker, Inc. v. Beats Case No. D2019-2413 1. The Parties The Complainant is Stanley Black & Decker, Inc., United States of America (“United States”), internally represented. The Respondent is Beats, Republic of Korea. 2. The Domain Name and Registrar The disputed domain name <dewaltworkwear.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2019. On October 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2019, 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. On October 11, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Complainant requested that English be the language of the proceeding. On October 14, 2019, the Respondent requested that Korean be the language of the proceeding. 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 and 4, the Center formally notified the Respondent in English and Korean of the Complaint, and the proceedings commenced on October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any formal response. On November 8, 2019, the Center notified the Parties that it would proceed to panel appointment. The Center appointed Moonchul Chang as the sole panelist in this matter on November 19, 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. 4. Factual Background The Complainant, Stanley Black & Decker, Inc., is an American manufacturer of hand tools, power tools and related accessories, mechanical access solutions and electronic security solutions, engineering fastening systems and infrastructure solutions including work wear. The Complainant has obtained registrations for the DEWALT trademarks since 1992 around the world including in the United States ( e.g. , Registration No. 2656133, registered on December 3, 2002) and the Republic of Korea ( e.g. , Registration No. 4003692740000, registered on July 18, 1997). According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain name <dewaltworkwear.com> was registered on February 13, 2012. 5. Parties’ Contentions A. Complainant The Complainant contends that: (1) The disputed domain name is identical or confusingly similar to the DEWALT trademarks. The Complainant registered the trademarks globally since 1992, which are used in relation to a broad range of consumer and industrial products including work wear. The disputed domain name <dewaltworkwear.com> includes the DEWALT trademark in its entirety. “Workwear” is merely a descriptive term denoting a sub-set of the overall range of products made. (2) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not offer any goods or services at his website under the disputed domain name. When the Complainant has attempted to land on the website at the disputed domain name<dewaltworkwear.com>, it was redirected to a page with a “buy this domain” link which diverts to sedo.com, a domain sales agent. There is no bona fide use of the disputed domain name at this website. (3) The Respondent has used the disputed domain name in bad faith. Although the Respondent was not authorized or permitted to use the trademark DEWALT, he possessed the disputed domain name inferably to benefit from the underlying value of the Complainant’s trademark. Firstly, since the disputed domain name was registered on February 13, 2012, its website remains inoperable. Secondly, when the Complainant has attempted to purchase the disputed domain name for a reasonable price, the Respondent, via its agent, offered to sell the disputed domain name for USD 5,500 which is far in excess of the registration fee. Thirdly, the Respondent owns other domain names of famous brands such as <adidassport.com> and <samsungsolutions.com>. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. The Respondent is comfortable with the English language in the light of the fact that the disputed domain name includes the words “work” and “wear”. In addition, the Respondent owns many domain names which include English words such as <adidassport.com>, <samsungsolutions.com>, <funnyyoutube.com>, <motorglobe.com>, and <bikeforever.com>. Furthermore, the email address of the Respondent also contains an English word “lawyer”, which indicates his proficiency with English language whereas the Complainant has no knowledge of Korean. Therefore, if the language of the proceedings was Korean, then this would result in delay and considerable expenses of translating documents. On the other hand the Respondent, while not actually submitting a Response, requests to conduct the administrative proceeding in the Korean language since the Complainant understands Korean market and culture and the language of the registration agreement is Korean. Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia , to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Decision in English. By not responding to the Complaint, but merely asking that the proceedings be conducted in Korean, the Panel feels the Respondent is merely trying to add delay and expense. 6.2. Merits Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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. A. Identical or Confusingly Similar The disputed domain name <dewaltworkwear.com> is comprised of two words: “dewalt” and “workwear”. The dominant feature of the disputed domain name is “dewalt” which is entirely identical to the Complainant’s trademark and the word “workwear” is only a generic term and descriptive suffix. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make the domain name “confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited , WIPO Case No. D2000-1678 ). The generic Top-Level Domain (“gTLD”) suffix “.com” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl , WIPO Case No. D2007-1653 ). Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent (see e.g. , Croatia Airlines d.d. v. Modern Empire Internet Ltd. , WIPO Case No. D2003-0455 ). Firstly, the Complainant contends that he has never licensed or authorized the Respondent to use the Complainant’s trademark or to register any domain names incorporating the DEWALT mark, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case. Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the registration of the disputed domain name may result in false suggestion that the Respondent is authorized to use the trademark DEWALT or his website is an official website of the Complainant. In the meantime the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case. Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use. Firstly, since the DEWALT mark is widely-known in many countries, including the United States and the Republic of Korea, it is most likely that the Respondent registered the disputed domain name with notice of the Complainant’s trademark. In addition, the Respondent in all likelihood registered the disputed domain name with the expectation of taking advantage of the reputation of the Complainant’s trademarks. Next, since the disputed domain name was registered, its website remains substantially inoperable. When the Complainant has previously clicked the disputed domain name <dewaltworkwear.com>, it was redirected to a page with a “buy this domain”. As the Complainant has attempted to purchase the disputed domain name for a reasonable price, the agent of the Respondent offered to sell the disputed domain name for the price which is far in excess of the registration fee. Further, having considered the Respondent’s registration of numerous domain names incorporating third-party famous trademarks, the Panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith. Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case. 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 <dewaltworkwear.com> be transferred to the Complainant. Moonchul Chang Sole Panelist Date: December 6, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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