Domain name virtually identical to trademark - Likelihood of confusion - Bad faith use and registration - ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

The Stanley Works ("Stanley") and its wholly owned subsidiary, the Stanley Works Pty Ltd. ("Stanley Australia") is the owner of numerous trademarks and trade names worldwide, including SIDCHROME.  Stanley operates a web site accessible through the domain name stanleyworks.com. Through this website, Stanley promotes its products and provides a listing of authorized distributors and representatives. Respondent registered the domain name "sidchrome.com" with the Registrar, Register.com.  Respondent then contacted Stanley's Australian subsidiary to advise them that he had recently acquired the domain name and made an implicit offer to sell the domain name.

Held , domain name transferred to Claimant.

The registered domain name, "sidchrome.com", is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and the Respondent does not have any right or legitimate interests in respect of the domain name, "sidchrome.com", which is the subject of the complaint.

Respondent registered and acquired the domain name, "sidchrome.com", in bad faith as is evidenced by the circumstances which indicate that Respondent registered the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant who was the owner of the trademark.

PROCEDURAL FINDINGS

Domain Name: sidchrome.com

Domain Name Registrar: Register.com

Domain Name Registrant: Brett Borden

Date of Domain Name Registration: October 6, 1999 

Date Complaint Filed: February 24, 2000

Due Date for a Response: March 20, 2000

Respondent did submit a response to the Complaint.

Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)l and Rule 4(c)[1]: February 28, 2000

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Register.com, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On October 6, 1999, Respondent registered the domain name "sidchrome.com" with Register.com, the entity that is the Registrar of the domain name. By registering its domain name with Register.com, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. The Stanley Works ("Stanley") and its wholly owned subsidiary, the Stanley Works Pty Ltd. ("Stanley Australia") is the owner of numerous trademarks and trade names worldwide, including SIDCHROME ("The Mark").

2. Stanley and its predecessors in interest adopted and began using the Mark in 1947 in connection with various tools. Stanley has secured registrations in over 10 countries for the Mark, and has used such Mark extensively in connection with such goods in international commerce, particularly in Australia and New Zealand.

3. Stanley has invested substantial sums of money in developing and marketing its products. 

4. As a result of Stanley's substantial investment in developing and marketing products bearing Stanley's Mark, and as a result of the substantial sales of such products, consumers in Australia, New Zealand and elsewhere have come to recognize Stanley's Mark and to associate it with the producer of mechanics' tools. 

5. Stanley operates a web site accessible through the domain name stanleyworks.com. Through this website, Stanley promotes its products and provides a listing of authorized distributors and representatives. Stanley's Mark is referenced at this website. 

6. On October 6, 1999, Registrant registered the domain name in controversy, "sidchrome.com" with the Registrar, Register.com.

7. On October 11, 1999 Respondent sent a letter to the address of Stanley's Australian subsidiary in which Respondent reported that he had recently acquired the domain name and made an implicit offer to sell the domain name to the entity that Respondent knew owned rights in the name SIDCHROME.

8. In response to correspondence from Stanley Australia's counsel, by e-mail to Stanley Australia's counsel dated January 14, 2000 Respondent discussed offers it had received and apologized that transfer would not be to Complainant and the sale would not be to Stanley Australia. 

9. On January 14, 2000 Respondent sent an e-mail to Stanley Australia's counsel stating that he would comply with the requested transfer of the domain name to Stanley Australia. 

10. Respondent is still the owner of record of the domain name and has not transferred it to Stanley Australia or to Complainant and has not sold the domain name. 

11. Respondent did cause a statement to be placed with the Registrar, Register.com that the registrant (Respondent) "Brett Borden is not connected or associated with the registered ëSidchrome' trademarks". 

12. The registered domain name, "sidchrome.com", is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and the Respondent does not have any right or legitimate interests in respect of the domain name, "sidchrome.com", which is the subject of the complaint.

13. Complainant has been damaged by the acts of the Registrant and will continue to be damaged unless the domain name, "sidchrome.com" is transferred to Complainant. 

14. Respondent registered and acquired the domain name, "sidchrome.com", in bad faith as is evidenced by the circumstances which indicate that Respondent registered the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant who was the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name. 

15. No evidence has been presented that respondent has any right or legitimate interest to the domain name as provided in rule 4(c). 

16. Complainant's prayer for relief requests that the domain name be transferred from Respondent to Complainant. 

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "sidchrome.com", registered by Respondent on October 6, 1999, with Register.com, is identical or confusingly similar to Complainant's trademark SIDCHROME, and to which Respondent has no right or legitimate interests.

2. Respondent registered and acquired the domain name "sidchrome.com" primarily for the purpose of selling, renting or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name. Respondent registered and used the domain name in bad faith.

3. Under ICANN's Uniform Domain Dispute Resolution Policy Complainant has proven that the Domain name should be transferred from Complainant to Respondent. 

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "sidchrome.com" REGISTERED BY RESPONDENT BRETT BORDEN, BE TRANSFERRED TO COMPLAINANT THE STANLEY WORKS. 
 

Dated: March 21, 2000, by Judge Karl V. Fink (Ret.), Arbitrator

Honorable Karl V. Fink

[1] Any reference to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.

Domain Name Transferred