Stanley-garage-opener.com

The timeline behind stanley-garage-opener.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Stanley Logistics, Inc. v. Martial Maitam d/b/a Marwest Access Controls, Inc. Claim Number: FA0308000176551 PARTIES Complainant is Stanley Logistics, Inc., New Britain, CT (“Complainant”) represented by Leo M. Loughlin of Arent Fox Kintner Plotkin & Kahn. Respondent is Martial Maitam d/b/a Marwest Access Controls, Inc., Chatsworth, CA (“Respondent”) represented by Anthony M. Solis. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <stanley-garage-opener.com> registered with Register.com. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Estella S. Gold as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 31, 2003; the Forum received a hard copy of the Complaint on August 4, 2003. On August 4, 2003, Register.com confirmed by e-mail to the Forum that the domain name <stanley-garage-opener.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). DOCS_PH 1482564v1 On August 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@stanley-garage-opener.com by e-mail. A timely Response was received and determined to be complete on September 12, 2003. An additional submission was received electronically from Complainant, which electronic submission was timely. However, the additional submission did not comply with Supplemental Rule 7 because the hard copy was not received until September 22, 2003. Although technically this additional submission was not timely under Supplemental Rule 7, the actual submission was timely received electronically, and therefore has been reviewed to give the Complainant due process and consideration of all arguments. On September 22, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant is a well-known manufacturer of garage door openers for residential and commercial applications. Complainant owns the registered trademark STANLEY and has used the mark in various applications continuously since 1920. Complainant alleges that its mark is distinctive and famous. Complainant alleges that it has not licensed Respondent to use its name, its trade dress, or its marks. Complainant alleges that Respondent’s use of its marks is confusingly similar to Complainant’s use of its registered marks, and would mislead members of the public into believing that Respondent’s website is affiliated with Complainant’s and/or that Respondent is an authorized dealer of Complainant’s products, which it is not. In Complainant’s Additional Submission, it supplies the Panel with evidence that as recently as September 2003, following Complainant’s various correspondence with Respondent objecting to Respondent’s website, Respondent continues to state on its website, “Established in 1993, We [Respondent] are authorized distributors for Stanley.” B. Respondent Respondent concedes that the domain name <stanley-garage-opener.com> incorporates the registered trademark “Stanley”. Respondent argues that Complainant does not offer for sale, nor does itself continue to manufacture the access control devices or spare parts, which Respondent markets on its website. However, Respondent notes that the Stanley products which it sells on its website are devices manufactured by Complainant’s licensees. Respondent argues that it has a legitimate interest in the domain name because it sells Stanley-branded and Stanley-licensed products, as well as products of other Stanley competitors. Respondent argues that it has never attempted to sell its domain name to Stanley, nor engage in any activities which might justify allegations of “bad faith” under the Policy. C. Additional Submissions Complainant has provided Additional Submissions which include a download of Respondent’s website as of September 2003, which show that Respondent alleges that it is an authorized dealer of Complaint’s. FINDINGS The Panel finds (1) that the domain name registered by the Respondent, <stanley-garage-doors.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) that the Respondent has no rights or legitimate interests with respect to the domain name; and (3) that the Respondent has registered and has been using the domain name in bad faith. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar It is undisputed that the domain name “Stanley-Garage-Doors.com” incorporates the registered trademark of the Complainant “Stanley”, plus the name of a product which the Complainant licenses for manufacture within the scope of that trademark registration. Complainant argues that Respondent’s <stanley-garage-opener.com> domain name is confusingly similar to Complainant’s STANLEY mark because the disputed domain name incorporates Complainant’s mark along with the generic or descriptive terms “garage” and “opener.” The Panel concludes that Respondent’s addition of these generic or descriptive terms does not serve to sufficiently distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i). This is especially true because the generic or descriptive terms relate to the types of products Complainant provides. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark). Rights or Legitimate Interests Complainant avers that Respondent is not licensed or authorized to use Complainant’s STANLEY mark in the disputed domain name. Complainant maintains that Respondent is not named or commonly known by <stanley-garage-opener.com>. The Panel finds that Respondent has no rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Respondent is using the <stanley-garage-opener.com> domain name to sell Complainant’s products. Complainant asserts that Respondent does not have permission from Complainant to use the STANLEY mark as part of the disputed domain name. The Panel rules that Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell Complainant’s products does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See K&N Eng’g., Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002) (holding that Respondent, who was not an authorized distributor of Complainant’s products, lacked rights or legitimate interests in a domain name incorporating Complainant’s mark); see also Hewlett-Packard Co. v. Burgar, FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that Respondent has no rights or legitimate interests in the <hewlettpackard.com> domain name, because Respondent is not a licensed dealer of Hewlett-Packard products and has not demonstrated any right except to declare that he is affiliated with a licensed re-seller of Complainant’s products). Registration and Use in Bad Faith Complainant contends that Respondent’s unauthorized use of the STANLEY mark in the <stanley-garage-opener.com> domain name establishes bad faith registration and use of the domain name because Respondent is capitalizing commercially on the likely confusion of Internet users. The Panel decides that Respondent’s use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where Respondent, a distributor of Complainant’s products who was not a licensee of Complainant, used Complainant’s mark in its domain name, suggesting a broader relationship with Complainant and fostering the inference that Respondent was the creator of Complainant’s products rather than a mere distributor); see also Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Nat. Arb. Forum Dec. 2, 2002) (finding that Respondent, through the use of Complainant’s mark to redirect Internet users to a website selling Complainant’s product, placed itself without Complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith use of the domain name). Moreover, the Panel presumes that Respondent had actual knowledge of Complainant’s rights in the STANLEY mark because Respondent sells Complainant’s goods. The Panel finds that Respondent’s registration of the <stanley-garage-opener.com> domain name despite actual knowledge of Complainant’s rights in its mark exhibits Respondent’s bad faith regsitration and use of the domain name. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <stanley-garage-opener.com> domain name be TRANSFERRED from Respondent to Complainant. ___________________________________________________ Estella S. Gold, Panelist Dated: October 7, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.