Clad Holdings Corporation v. Administration Local

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Clad Holdings Corporation v. Administration Local

Case No. D2005-0124

1. The Parties

The Complainant is Clad Holdings Corporation of Washington, D.C., United States of America, represented by Harris, Wiltshire & Grannis, LLP, United States of America.

The Respondent is Administration Local, of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <allcladcookware.com> is registered with Namezero.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 4, 2005, the Center transmitted by email to Namezero a request for registrar verification in connection with the domain name at issue. On February 4, 2005, Namezero transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2005.

The Center appointed Kristiina Harenko as the sole

panelist in this matter on April 25, 2005. 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

Complainant Clad Holdings Corporation (“Clad Holdings”) has registered with the United States Patent and Trademark Office its rights in the trademark ALL-CLAD. According to the extracts from trademark electronic search system of the United States Patent and Trademark Office the Complainant has registered trademarks consisting of or including the word “All-clad”.

The Respondent registered its domain name <allcladcookware.com>

on December 24, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant is a recognized world leader in the manufacture and merchandizing of cookware and cooking utensils. The Complainant has used its ALL-CLAD mark in commerce since 1973. The Complainant uses its name and trademark in connection with its famous All-clad cookware and cooking utensils. One major use of the ALL-CLAD mark is on Clad Holdings’ website “www.allclad.com”.

a) Identity or Confusing Similarity

Respondent’s registered domain name <allcladcookware.com> is confusingly

similar to the Complainant’s mark. It differs from Complainant’s

mark only by virtue of the addition of the word “cookware” to Complainant’s

mark. Prior UDRP panels have determined that such a minor alteration to a Complainant’s

mark does not provide amnesty from “a finding of confusing similarity.”

The Complainant refers to America Online, Inc. v. Yeteck Communication, Inc.,

WIPO Case No. D2001-0055 (finding <aolsportbet.com>,

<aolcasino.com> confusingly similar to the AOL and AOL.COM trademarks;

Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan,

WIPO Case No. D2004-0218 (finding Respondent’s

use of <costcofurniture.com> and <costcohome.com> confusingly similar

to Complainant’s mark COSTCO.COM). Respondent’s use of Complainant’s

mark, like the use in America Online, supra, is an “adaptation

of a recognized trademark in a Domain Name by” the addition of a word

(America Online, supra, WIPO Case No.

D2001-0055).

The Complainant points out that the added word in the present case describes

one of the products for which Clad Holdings is most widely recognized: cookware.

Indeed, “virtually all users will associate” <allcladcookware.com>

with Clad Holdings’ trademark ALL-CLAD. The Complainant refers in this

context to Microsoft Corporation et al. v. MS Networks, WIPO

Case No. D2002-0647. Respondent’s decision to attach the word “cookware”

to Complainant’s mark thus presents strong evidence that the sole purpose

of the <allcladcookware.com> domain name is to draw consumer interest

by creating confusion with the ALL-CLAD mark and Clad Holdings’ products.

The Complainant refers also in this respect to the Microsoft Corporation

v. MSNetworks, WIPO Case No. D2002-0647,

noting harm created by “consumer confusion” and to Brookfield

Communications, Inc. v. West Coast Entm’t, 174 F3d 1036 (9th

Cir. 1999) holding that initial interest confusion causes significant injury

even where no sale is consummated. According to the Complainant, the evidence

that Respondent registered the disputed domain name in bad faith further supports

a finding that Respondent sought to capitalize on All-Clad’s long-established

and well-known mark. The Complainant’s contentions related to bad faith

registration are dealt with below in Section 5A(c).

b) Rights or Legitimate Interests

Examples of illegitimate interest in respect of the

use of the domain name include: a) that Respondent has no license to use the

disputed domain name; b) that Respondent is not known by the domain name; and

c) there is no connection between the Respondent’s business and the use

of the domain name (Microsoft, supra, WIPO

Case No. D2002-0647).

The Respondent, Administration Local, is not affiliated

with Clad Holdings in any way. In particular, Clad Holdings has never given

Administration Local any license or consent, express or implied, to use Complainant’s

mark in its domain name or in any other manner. To the best of the Complainant’s

knowledge, Administration Local has never even requested permission to use All-Clad’s

mark. In addition, Respondent is not using the domain name “in connection

with a bona fide offering of goods or services” or for “legitimate

noncommercial or fair use… without intent for commercial gain to misleadingly

divert customers[.]” (Policy, paragraph 4(c). As in Microsoft Corp.

v. Stoneybrook, WIPO Case No. D2000-1274,

Respondent here chose a famous mark to use in its domain name specifically to

drive traffic to its own website (Microsoft, supra, WIPO

Case No. D2000-1274, holding that Respondent had no legitimate interest

in the domain name used “misleadingly to divert users to what appears

to be its gambling site”).

Respondent’s website displays a list of brand

names and product descriptions which, when clicked on, in turn display lists

of websites which sell the merchandise- such as “All Clad Cookware”–identified

on Respondent’s site. The website highlights not only All-Clad Cookware

but variations of All-Clad, such as All Clad, Allclad, All Clad Ltd., and Clad.

Complainant has attached a print out of Respondent’s website as of February 1, 2005.

Respondent’s site in fact has no function other than to “divert

users” to other websites, most of which sell either Clad Holdings’

exact merchandise or competing products, giving rise to the inference that Respondent

constructed its site in order “to share in revenues obtained from the

diverted traffic,” Costco, supra, WIPO

Case No. D2004-0218, and/or to collect “click-through fees and to

generate sales revenue “for the sites to which users are diverted, Cancer

Treatment Centers of America Inc., (CTCA) v. Henry Chan, WIPO

Case No. D2003-0611. Like the Respondent in the CTCA case, Respondent

here “trades on the Complainant’s goodwill by misleading members

of the public to its sites and affirmatively seeks to confuse the Complainant’s

customers and others who… guess at or cannot recall exactly the URL of

the Complainant’s website.” (Id.; Complainant also refers

to Yahoo! Inc., et al. v. Henry Chan, FA0306000162050 National Arbitration

Forum (finding that “registration and use of …domain name incorporating

the complainants’ mark to redirect Internet traffic … was not legitimate

use”).

c) Registration and Use in Bad Faith

Among the factors the Policy cites as evidence of

bad faith registration and use is paragraph 4(b)(iv): “an intentional

attempt to attract, for commercial gain, Internet users … by creating

a likelihood of confusion with the complainant’s mark as to the source,

sponsorship, affiliation, or endorsement of the website.” There is no

doubt that the addition of the word “cookware” to Complainant’s

mark creates confusion as to the “source, sponsorship, affiliation, or

endorsement” of <allcladcookware.com>. The Complainant refers to

its contentions in Section 5A(a) and to Microsoft, supra, WIPO

Case No. D2002-0647 (finding that registration of <msnetworks.com>

was an intentional attempt “to attract [users] … for commercial

gain … by creating a likelihood of confusion … as to the source,

sponsorship, affiliation or endorsement of the website”). Indeed, “consumers

[are] attracted to [Respondent’s] site by virtue of the confusing nature

of the domain name[.]” (Id). Respondent’s domain name clearly

relies on both its “confusing similarity with the Complainant’s

mark” and the fact that the domain name is “so obviously connected

with Complainant’s service mark and its services[.]” (Id).

The panel in the CTCA case determined that such obvious connection and

similarity, by its very use, “suggests opportunistic bad faith.”

CTCA, supra, WIPO Case No. D2003-0611

(internal quotation marks omitted). By employing a confusingly similar mark,

Respondent here captures users hoping to enter Complainant’s site and

trades on “the goodwill surrounding Complainant’s mark to redirect

users to websites unrelated to the Complainant[.] (Id). This constitutes

bad faith use. See also Microsoft, supra, WIPO

Case No. D2002-0647.

Similarly, UDRP panels have found bad faith in the

“plundering” of a legitimately registered mark by use of a confusingly

similar domain name that diverts users to an unrelated website. See Costco,

supra, WIPO Case No. D2004-0218, (finding,

inter alia, that use of <costcofurniture.com> and <costcohome.com>

evidences “an operation of plundering the reputation of well-known marks”).

Like the Respondent in Costco, supra, Respondent here is plundering Clad

Holdings’ legitimately registered mark for its own illegitimate commercial

gain.

According to the Complainant, there can be no doubt

that causing confusion regarding affiliation with Clad Holdings’ mark

is the very purpose of Respondent’s use of the domain name <allcladcookware.com>.

Complainant’s ALL-CLAD mark is “well known internationally and it

is inconceivable that the Respondent was not aware of the Complainant’s

mark at the time it registered the domain name (See Microsoft, supra,

WIPO Case No. D2002-0647). Furthermore,

“Respondent is deemed to have constructive notice of the Complainant’s

… mark, the Respondent would have discovered the Complainant’s [

] mark upon performing a trademark search[ ].”At any rate, “failure

to perform a trademark search is evidence of bad faith”, CTCA, supra,

WIPO Case No. D2003-0611.

A former UDRP panel has found that “failure

to provide complete or accurate contact information for a domain name is indicative

of bad faith”, Microsoft, supra, WIPO

Case No. D2002-0647. Complainant has attempted to contact Respondent. In

January 2005, Clad Holdings’ attorney wrote to Respondent at both the

postal address and the e-mail address provided by the Whois lookup for the <allcladcookware.com>

domain name. Respondent never replied, suggesting that the contact information

provided by Respondent is either inaccurate or ineffective because the Respondent

does not respond to correspondence directed to it.

Although “[I]t is often quite difficult to actually

show bad faith with concrete evidence” where a “Complainant has

presented some evidence pointing in that direction, it is then incumbent upon

the Respondent” to rebut that evidence. CTCA, supra, WIPO

Case No. D2003-0611. Here, the deliberate use of a domain name comprised

of one of Clad Holdings’ primary product and the ALL-CLAD mark itself,

specifically in order to divert Internet users to other websites marketing both

the Complainant’s merchandise and competing merchandise, provides remarkably

strong evidence of bad faith.

d) Remedy Requested

The Complainant requests that the domain name <allcladcookware.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant must convince the Panel on the following three criteria:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name was registered and used in bad faith.

Under paragraph 15(a) of the Rules, this Panel must “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.”

In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The dominant part of the domain name <allcladcookware.com> comprises the word “allclad”, which is identical to the registered trademark ALL-CLAD, which has been registered by the Complainant as a trademark in the United States. The Panel concludes that the Complainant, as registered proprietor of the mark, has established rights in a trademark, sufficient for the purposes of paragraph 4(a) of the Rules. The addition of “cookware” to Complainant’s trademark ALL-CLAD does not overshadow the impact on observers of the element “allclad” as the dominant part and as the element that indicates a connection to the Complainant. The addition of the word “cookware” rather strengthens the impression that it is a domain name of the Complainant, since the added word describes the very product for which Clad Holdings is most widely recognized: cookware. Consequently, the disputed domain name, <allcladcookware.com>, is found to be confusingly similar to Complainant’s registered trademark ALL-CLAD.

B. Rights or Legitimate Interests

The Respondent is not affiliated with Clad Holdings in any way. The Respondent does not have any license to use the ALL-CLAD trademark, nor is he a representative of the Complainant.

The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the domain name. The arguments by the Complainant, as summarized hereinabove under 5A(b), supported by means of proof submitted by the Complainant, have convinced the Panel that the Respondent has not had, nor has, any rights or legitimate interests in respect of the domain name <allcladcookware.com>.

C. Registered and Used in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) of the Policy to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainant has made several submissions in relation to this point (please refer to the Complainant’s contentions under Section 5A(c) of this Decision), the strongest of which is the claim that the Respondent is using the domain name to attract visitors to its site, as a result of consumer confusion.

This claim is based on the bad faith exemplar scenario outlined in paragraph 4(b)(iv) of the Policy, which reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location.”

This paragraph applies to this case. The addition

of the word “cookware” to Complainant’s mark ALL-CLAD creates

confusion as to the “source, sponsorship, affiliation, or endorsement”

of the domain name <allcladcookware.com>. The disputed domain name clearly

relies on both its confusing similarity with the Complainant’s mark and

the fact that the domain name is so obviously connected with Complainant’s

trademark and its products, that the domain name by its very use suggests opportunistic

bad faith. By employing a confusingly similar mark, Respondent captures users

hoping to enter Complainant’s site and trade on the goodwill surrounding

Complainant’s mark to redirect users to websites unrelated to the Complainant.

This activity falls clearly into the exemplar of bad faith use and registration

requirements of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds

that Respondent has registered and is using the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <allcladcookware.com> be transferred to the Complainant.

Kristiina Harenko

Sole Panelist

Dated: May 9, 2005

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