The Stanley Works and Stanley Logistics, Inc.
v.
Camp Creek Co., Inc.
[Indexed as: Stanley Works v. Camp Creek]
[Indexed as: STANLEYBOSTITCH.COM et al]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0113
Commenced: 2 March, 2000
Judgment: 13 April, 2000
Presiding Panelist: Dennis A. Foster
Domain name - U.S. Trademark Trademark tarnishing - Cybersquatting - Identical - Confusingly similar - Rights or legitimate interests - Bad faith registration - Bad faith use.
Complainant is the owner of certain trademarks using the BOSTITCH/STANLEY names. Complainant has for over seventy years used the BOSTITCH/STANLEY names in varying combinations to designate devices it manufactures. Respondent registered with NSI ten domain names, all being combinations of the STANLEY and BOSTITCH trademarks.
Complainant alleges that Respondent registered the domain names in bad faith because the Respondent was well aware that Complainant was the owner of the trademarks. Complainant further alleges that the Respondent set up websites, using the disputed domain names, that led some of Complainants clients to believe that Respondent is the source of STANLEY and BOSTITCH products. Complainant alleges that Respondent used its website to tarnish Complainants trademark by making disparaging associations with Complainant and its products. Complainant alleges that Respondent has implied strongly it would turn over the domain names to Complainant for suitable compensation. Complainant has also stated that Respondent has also registered the trademarks of Senco Products as domain names. Respondent contends the sole purpose of the websites is to promote the sale of STANLEY BOSTITCH products. Respondent states it has been an authorized retail seller of STANLEY BOSTITCH products since 1991.
Held, Names Transferred to Complainant.
Respondents domain names are identical or confusingly similar to
Complainants trademarks.
There is little evidence that Respondent is an authorized retail
seller of Complainants products. Even if Respondent is a retail seller
of Complainants products, the collateral trademark use necessary to allow
resell of Complainants products is not enough to confer the right to use
these trademarks as domain names. Respondent was in bad faith because it
solicited compensation for the domain names and tarnished Complainants
trademarks to disrupt Complainants business. Respondents pattern of cybersquatting
also gives rise to an adverse inference of bad faith
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy; Paragraph 4.
ICANN Rules for Uniform Domain Name Dispute Resolution Policy; Rule
6(f); Rule 7; Rule 15.
World Intellectual Property Organization Arbitration and Mediation
Centers Supplemental Rules
Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
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Foster, Panelist: -
1. The Parties
Complainant:
The Stanley Works and Stanley Logistics, Inc.
1000 Stanley Drive
New Britain, CT 06053
USA
Represented by:
William E. Marames, Esq.
Ms. Therese K. Francese
Arent Fox Kintner Plotkin & Kahn
1050 Connecticut Avenue, N.W.
Washington, D.C. 20036
USA
Respondent:
Thomas A. Vangunten
President
Camp Creek Co. Inc. (also doing business as Nailpro)
P.O. Box 172
Floyd, VA 24091
USA
2. The Domain Names and the Registrar
The disputed domain names are:
1. stanleybostitch.com
2. stanley-bostitch.com
3. stanleybostitch.org
4. stanley-bostitch.net
5. stanley-bostitch.org
6. stanleybostitch.net
7. bostitch.net
8. bostitch.org
9. bostitchnails.com
10. bostitchtools.com
The Registrar for the disputed domain names is Network Solutions Inc.
of Herndon, Virginia, USA.
3. Procedural History
This Complaint was filed on March 2, 2000, in accordance with the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy and Rules ("the Policy" and "the Rule(s)") and the World Intellectual Property Organization Arbitration and Mediation Centers (the "Center") Supplemental Rules. The fee of $1,500 was paid by Complainant on March 2, 2000; on the same date a copy of the Complaint was sent to Registrar Network Solutions Incorporated (NSI) .
On March 5, 2000, the Center requested NSI check and report back on
the identity of the Registrant of the contested domain names. The response
from NSI was filed on March 6, 2000, and stated that NSI was the Registrar
of the disputed domain names, and that the Registrant was Respondent Camp
Creek Co., Inc. The registered contact person was Thomas A. Vangunten.
The Notification of Complaint and Commencement of Administrative Proceeding
was sent electronically, by courier and by post to Respondent on March
8, 2000. Respondents Response was filed on March 27, 2000.
The Administrative Panel (one Panelist) was selected on March 31, 2000, in accordance with Rule 6(f). The Panelist, Dennis A. Foster, accepted the appointment and submitted a Declaration of Impartiality and Independence on March 31, 2000, (Rule 7). The Parties were notified of the Panels selection on April 1, 2000.
The Center has determined the Complaint and Response and all communications
were submitted in accordance with ICANNs Policy and Rules and the Centers
Supplemental Rules.
Under ICANN Rule 15(b), this decision is due by April 15, 2000.
4. Factual Background
This dispute arises out of Complainants assertion that it is the owner of certain trademarks (Section 2 above) using the Bostitch/Stanley names which Respondent has registered as domain names. Complainant has for over seventy years used the Bostitch/Stanley names in varying combinations to designate wire stitching, nailing, stapling and other fastening or attaching tools and devices that Complainant manufactures. Complainant submitted with its Complaint (pp. 3-4 and Annex B) exemplary copies of eight (8) United States trademark registrations of the names Bostitch and Stanley dating back to 1920.
Beginning on February 26, 1999, Respondent registered with NSI the ten
(10) domain names set out in Section (2) above, all being combinations
of the Stanley and Bostitch trademarks. Ownership of these domain names
is the subject matter of this dispute.
5. Parties Contentions
A. Complainant
The Complainant Stanley Works and Stanley Logistics, Inc. contends the
following:
· The Respondent Camp Creek Co., Inc. registered in bad faith
the ten (10) domain names listed in Section (2) above with NSI beginning
on February 26 ,1999. Complainant contends Respondent was well aware that
Complainant was the owner of these trademarks because of registrations
and the goodwill and notoriety the trademarks have acquired over the years
as designators of Complainants products.
· According to Complainant, Respondent went further and set
up websites using these domain names, with a home page created in August,
1999, (Complaint Annex C). The websites led some of Complainants clients
to believe that Respondent is the source of Stanley and Bostitch products.
· After Complainant sent Respondent a cease and desist letter
on September 22, 1999 (Complaint Annex D), Respondent refused to close
its websites and transfer the domain names to Complainant.
· Complainant contends Respondent also confused clients by using
its website to advise inquirers to write to Complainants legal counsel
about ordering some of the products Complainant manufactures, and to make
known instances of dissatisfaction with Complainants products.
· According to Complainant, Respondent has implied strongly
it would turn over the domain names to Complainant for suitable compensation
such as authorizing Respondent to sell more of Complainants products.
· To put further pressure on Complainant, Respondent used its
website to tarnish Complainants trademark by making disparaging associations
with Complainant and its products.
· Finally, Complainant contends the disputed domain names should
be transferred to Complainant.
B. Respondent
· In its Response, Respondent contends the sole purpose of the
websites is to promote the sale of Stanley Bostitch products. Respondent
states it has been an authorized retail seller of Stanley Bostitch products
since 1991.
· Respondent contends it never made any request for compensation,
Complainants exhibits have been "manipulated", and Complainants contentions
are "false, malicious and defamatory."
6. Discussion and Findings
The Policy para 4(a) provides that Complainant must prove each of the following to obtain transfer or cancellation of the disputed domain names:
· that Respondents domain name is identical or confusingly similar
to a trademark or service mark in which Complainant has rights; and
· that Respondent has no rights or legitimate interests in respect
of the domain name; and
· the domain name has been registered and is being used in bad
faith.
Identical or Confusingly Similar
Eight of Respondents registered domain names (Section 2 above) are
identical to Complainants trademarks. The remaining two, bostitch.nails.com
and bostitchtools.com are confusingly similar (Complaint p.3). Essentially,
Respondent has appropriated the trademarks Stanley and Bostitch, sometimes
rearranging them, sometimes adding a generic word such as nail, and has
registered the names in various top level domains such as org., com. and
net. Accordingly, we find Complainant satisfies the test that Respondents
domain names be identical or confusingly similar to Complainants trademarks.
Rights or Legitimate Interests
Complainant denies any direct connection with Respondent and contends
Respondents use of the trademark is "unauthorized" (Complaint Annex D).
Respondent states it has been an authorized retail seller of Complainants
products since 1991. There is little evidence of this: no authorization
or contract of any kind has been produced. Nor is there any evidence of
a mandate from Complainant to Respondent to open websites to "increase
Complainants business."
Moreover, even if Respondent is a retail seller of Complainants products,
the collateral trademark use necessary to allow resell of Complainants
products is not enough to give Respondent proprietary rights in Complainants
trademarks, and certainly not enough to confer the right to use these trademarks
as domain names. Many famous trademarks designate goods that are manufactured
and sold through numerous retail stores. But this, without something more
such as authorization in a licensing agreement or other special circumstances,
does not give the retail sellers rights of domain name magnitude over the
manufacturers trademarks. This Panel finds Respondent does not have sufficient
rights or interests in the trademarks to allow Respondent to register them
as domain names.
Bad Faith
Complainant has produced (Complaint Annex B) copies of documents showing
a long history of using the trademarks Stanley and Bostitch to designate
the various products it manufactures.
Except for a generic refutation and a characterization of Complainants
contention as "malicious", Respondent offered no evidence tending to disprove
Claimants well-substantiated contentions of many years of trademark ownership
and use.
There can be no doubt that Complainants trademarks are almost a household name in the United States. Respondent, which states it was a retail seller of Complainants products using the trademarks Stanley and Bostitch since 1991, undoubtedly was well aware of Complainants ownership of these trademarks at all times relevant to this dispute, including during the times Respondent registered the trademarks as domain names.
It necessarily follows that Respondent was in bad faith when it registered these ten (10) domain names with NSI beginning in February, 1999. To register so many domain names using so many combinations of Complainants trademarks is a pattern and a calculated attempt by Respondent to foreclose Complainant from using its own trademarks in cyberspace (the Policy 4 ( bii). This is classic cybersquatting.
Complainant produced convincing evidence, unchallenged by Respondent,
that Respondent stated in a letter of October 6, 1999, (Complaint Annex
E) that a settlement could be reached. When Complainant wrote back on December
1, 1999 (Complaint Annex F) insisting that Respondent stop using Complainants
trademarks as domain names, Respondent reacted by portraying on its homepage
a dinosaur trapped in a tar pit along with the text:
"The Stanley Works is an industrial dinosaur. Stanley is not adapting
well to the changing business climate. The New Economy is the meteorite
that will hasten the extinction of this former industry giant." (Complaint
Annex L)
This Panel fails to see how this action helps Respondent achieve its stated goal of using the domain names "to promote the sale of Stanley Bostitch products" (Respondents Response). This is trademark tarnishing for the purpose of disrupting Complainants business and a strong indication of bad faith (the Policy 4 (bi) and (biii).
Further evidence of bad faith is Respondents deliberately confusing Complainants clients by posting Complainants legal counsels contact information on Respondents website with an invitation to contact them to express any complaints about Complainants products (Complaint Annex M, the Policy 4 (biv). In consequence, Complainants legal counsel received inquiries about ordering Complainants products from customers in countries as disparate as Mexico and Germany.
Complainant also stated (Complaint p. 8), and Respondent does not refute
except for its general denial, that Respondent has also registered as domain
names the famous trademarks of Senco Products, Inc., another well-known
manufacturer of fastening tools. This pattern of cybersquatting also gives
rise to an adverse inference of bad faith (the Policy 4 (bi) and (biii).
Complainants evidence of Respondents bad faith (the Policy 4(b) is
substantial and convincing to this Panel. Therefore, this Panel finds that
Respondent was in bad faith because it solicited compensation for the domain
names, tarnished Complainants trademarks to disrupt Complainants business,
and engaged in a pattern of cybersquatting using Complainants and at least
one other famous trademark.
7. Decision
Based on the above, and pursuant to Policy para 4(i) and Rule 15, this
Panel orders that all ten (10) contested domain names registered by the
Respondent Camp Creek Co., Inc., namely:
1. stanleybostitch.com
2. stanley-bostitch.com
3. stanleybostitch.org
4. stanley-bostitch.net
5. stanley-bostitch.org
6. stanleybostitch.net
7. bostitch.net
8. bostitch.org
9. bostitchnails.com
10. bostitchtools.com
be transferred to the Complainant, the Stanley Works and Stanley Logistics,
Inc. The Complainant has shown that it has owned these trademarks and used
them continuously to distinguish its products for most of the past century,
and that it plans to continue doing so in the future. The Respondent has
no claim to these trademarks and its registrations are in violation of
the ICANN Policy and Rules.
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