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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wilmar Corporation v. Performance Tools/ Domains By Proxy, Inc.

Case No. D2007-1243

1. The Parties

Complainant is Wilmar Corporation (“Complainant”), a corporation incorporated under the laws of the State of Washington, United States of America.

Respondents are Performance Tools and Domains By Proxy, Inc. (“Respondents”), which are business entities located in the State of Arizona, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <performancetools.net> (the “Domain Name”). The registrar is GoDaddy.com, Inc. (the “Registrar”) located in Scottsdale, State of Arizona, United States of America.

3. Procedural History

On August 22, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email naming Domains By Proxy, Inc. as the Respondent.

On August 23, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the Registrar of the Domain Name and that the Domain Name is registered in the name of “Performance Tools”.

On August 26, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 27, 2007, the Center received hardcopy of the Complaint. Complainant paid the required fee.

On August 31, 2007, September 3, 2007 and September 4, 2007, the Center received amendments to the Complaint.

The Center verified that the Complaint as amended (the “Complaint”) satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On September 5, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondents together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.

On September 20, 2007, the Center received the Response of Performance Tools via email. On September 21, 2007, the Center acknowledged receipt of the Response. In light of panel approaches in comparable previous decisions, the Panel will for convenience simply treat Performance Tools and Domains By Proxy, Inc. as co-Respondents in these proceedings. See TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620.

On October 3, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

4. Factual Background

Complainant is the owner of the trademark PT PERFORMANCE TOOL (the “Mark”) having obtained a registration for the Mark in the United States of America on September 12, 1995 (U.S. Registration No. 1,918,635 in International Class 8 for manually-operated hand tools; namely, wrenches and wrench sets, sockets and socket sets, screwdrivers and screwdriver sets, pliers and plier sets, oil filter wrenches, lug wrenches, tire tools, brake tools, star drivers, squares and saws, and in International Class 9).

Complainant is one of the leading importers of professional and promotional hand tools in North America. Complainant currently distributes its products under the PT PERFORMANCE TOOL Mark internationally to over 2000 major retailers and distributors. The products include professional hand tools, tool sets, specialty tools, jacks and equipment, creepers, air tools, and countertop displays, among many other products and tools.

Complainant’s customers prominently feature the PT PERFORMANCE TOOL Mark on their signage, and on the merchandise sold to them by Complainant. Complainant’s customers promote Complainant’s products on their respective websites under the PT PERFORMANCE TOOL Mark. Complainant has established an Internet website which can be reached through a domain name comprised of portions the PT PERFORMANCE TOOL Mark at <performancetool.com>.

Complainant has used the PT PERFORMANCE TOOL Mark in commerce for over twenty-five years. Complainant and its retailers have spent more than three million dollars in annual advertising to promote the PT PERFORMANCE TOOL Mark. In 2006, total domestic and international sales for goods offered by Complainant in association with the PT PERFORMANCE TOOL Mark were more than fifty million dollars.

On or about February 18, 2004, the domain name <performancetools.net> was registered by Respondents with the Registrar without the consent or authorization of Complainant.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has a registration for the PT PERFORMANCE TOOL Mark, that its trademark registration is valid and subsisting, and that it serves as prima facie evidence of Complainant’s ownership and the validity of the Mark. 15 U.S.C. § 1115. Complainant further alleges that its registration is incontestable and conclusive evidence of its exclusive right to use the Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Complainant contends that the PT PERFORMANCE TOOL Mark is a suggestive mark that has acquired a secondary meaning. The PT PERFORMANCE TOOL Mark has achieved widespread recognition and secondary meaning through Complainant’s and Complainant’s customer’s extensive advertising and promotion of the Mark. The widespread recognition and secondary meaning in the marketplace entitles the PT PERMFORMANCE TOOL Mark to strong protection. Moreover, the widespread usage of the PT PERFORMANCE TOOL Mark to identify Complainant’s products is consistent with the substantial time, money, and effort Complainant and Complainant’s customers have invested in its Mark. In sum, Complainant contends that the PT PERFORMANCE TOOL Mark enjoys widespread consumer recognition as the identifier of goods and services provided by Complainant and, as such, the PT PERFORMANCE TOOL Mark is entitled to broad protection.

ii. Complainant argues that the Domain Name is confusingly similar to the PT PERFORMANCE TOOL Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark with the addition of generic term “.net” and by dropping “pt” and making tool into its plural “tools”. Complainant further argues that use of the dominant portion of the Mark is likely to cause confusion. Complainant describes the differences as “peripheral”.

iii. Complainant contends that Respondents have no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondents cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) of the Policy because they have not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondents cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy because they are not commonly known under the Domain Name. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use the Mark in a domain name or in any other manner.

Respondents cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) of the Policy because they are not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondents have deliberately registered Domain Name containing the dominant elements of the Mark to attract the attention of Internet users searching for Complainant’s products.

iv. Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy.

Paragraph 4(b)(i)-(iv) of the Policy identifies four nonexclusive criteria by which Complainant may prove Respondents’ bad faith:

Complainant alleges that the actions of Respondents fit within the criteria of Paragraph 4(b)(iv) of the Policy because Respondents are using the Domain Name, have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Complainant further alleges that Respondents’ website is offering for sale goods which directly compete with Complainant including manually operated hand tools such as combination and specialty wrenches in sets; hex bit sockets and keys; master mechanic complete tool sets; screwdriver sets and open stock; socket sets, drive tools and open stock among other products. In so doing Respondents created a likelihood of confusion with PT PERFORMANCE TOOL Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

B. Respondents’ contentions

i. Respondents do not dispute that Complainant has a registration for the PT PERFORMANCE TOOL Mark.

ii. Respondents assert that the Domain Name is not confusingly similar to the PT PERFORMANCE TOOL Mark because it does not falsely direct Complainant’s Internet users to Respondents’ website. Respondents attached the results of running several searches of “pt performance tools” and of “performance tools” on three major search engines. Respondents note that none of this traffic was redirected to Respondents’ website. Therefore, Respondents argue there is no misdirection of Internet users, hence no confusing similarity with Complainant’s Mark.

iii. Respondents do not review the three criteria pursuant to Paragraph 4(c) of the Policy by which Respondents may assert that they have rights to or legitimate interests in the Domain Name. Respondents state that they ran a search of the records of the State of Arizona in which Respondents are located and found no business registrations which would have prevented registration of the Domain Name.

iv. Respondents deny that they registered or used the Domain Name in bad faith. Paragraph 4(b) of the Policy suggests four types of evidence of bad faith registration, none of which applies:

Complainant has argued that Respondents have violated Paragraph 4(b)(iv) of the Policy because Respondents are using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Respondents respond that they had no knowledge that Complainant’s <performancetool.com> was in use when Respondents registered their Domain Name. Furthermore, the searches run by Respondents on the three major search engines and described above showed all traffic directed to Complainant’s website and not to Respondents’. Therefore, Respondents argue that they are not trying to intentionally attract Internet users by a likelihood of confusion with Complainant’s Mark.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both Complainant and Respondents are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States of America. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772.

Complainant is required to demonstrate the existence of each of the elements set forth in Paragraph 4(a) of the Policy. Paragraph 4(a) of the Policy directs that complainant must prove each of the following:

i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

ii) that the respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

A. Enforceable Trademark Rights

Complainant contends that it has a registration for the PT PERFORMANCE TOOL Mark, that its trademark registration is valid and subsisting, and that it serves as prima facie evidence of Complainant’s ownership and the validity of the Mark. 15 U.S.C. § 1115. Complainant further alleges that its registration is incontestable and conclusive evidence of its exclusive right to use the Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 115(b).

Respondents do not dispute that Complainant has a registration for the PT PERFORMANCE TOOL Mark.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the PL PERFORMANCE TOOL Mark.

B. Identity or Confusing Similarity

Complainant further contends that the Domain Name is confusingly similar to the PT PERFORMANCE TOOL Mark pursuant to the Policy Paragraph 4(a)(i).

Complainant argues that the Domain Name is confusingly similar to the PT PERFORMANCE TOOL Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the dominant portion of the Mark with the addition of generic term “.net” and by dropping “pt” and making tool into its plural “tools” – all of which are non-distinctive changes. Complainant further argues that Respondent’s use of the dominant portion of the Mark is likely to cause confusion. Complainant describes the differences as “peripheral”.

Respondents assert that the Domain Name is not confusingly similar to the PT PERFORMANCE TOOL Mark because it does not falsely direct Complainant’s Internet users to Respondents’ website. Respondents attached the results of running several searches of “pt performance tools” and of “performance tools” on three major search engines. Respondents note that none of this traffic was redirected to Respondents’ website. Therefore, Respondents argue there is no misdirection of Internet users, hence no confusing similarity with Complainant’s Mark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant’s registered trademark.

Contrary to Respondents’ underlying analysis, the owner of the registered trademark does not have to show “likelihood of confusion”, as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i) of the Policy, the question of identity and confusing similarity is evaluated solely based on a comparison between complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Therefore, it is irrelevant, for purposes of evaluating the first factor, whether a sample search on one of the three major search engines does or does not direct that Internet user to Respondents’ site. Internet users conduct their searches in a number of different ways, so that a single sample search is not determinative.

The Panel must first determine whether the Domain Name at issue is identical or confusingly similar to a mark in which Complainant has rights. The Policy specifically directs the Panel’s attention to a mark “in which the Complainant has rights”. The Panel is to compare the Mark and the Domain Name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Cafe, WIPO Case No. D2000-0068. Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, NAF Case No. FA94923.

The Panel notes that the entirety of the dominant element of the PT PERFORMANCE TOOL Mark is included in the Domain Name. The Panel further finds that the changes made by Respondents are non-distinctive. Accordingly, the Panel finds that the Domain Name is confusingly similar to the PT PERFORMANCE TOOL Mark in which Complainant has rights, pursuant to the Policy Paragraph 4(a)(i).

C. Rights or Legitimate Interests

Complainant contends that Respondents have no rights or legitimate interests in the Domain Name pursuant to the Policy Paragraph 4(a)(ii).

Complainant contends that Respondents have no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondents have no rights to or legitimate interests in the Domain Name. Once Complainant makes out a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondents to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Respondents do not review the three criteria pursuant to Paragraph 4(c) of the Policy by which Respondents may assert that they have rights to or legitimate interests in the Domain Name. Respondents state that they ran a search of the records of the State of Arizona in which both Respondents are located and found no business registrations which would have prevented registration of the Domain Name.

The Panel finds that this is not an adequate showing under Paragraph 4(c) of the Policy to carry Respondents’ burden of coming forward with some evidence to establish one of the three criteria, because a search of the public records of the State of Arizona is too narrow. Therefore, the Panel finds that Complainant has met its burden and Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy Paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of the Policy Paragraph 4(a)(iii).

The Policy Paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of Domain Names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Complainant alleges that the actions of Respondents fit within the criteria of Paragraph 4(b)(iv) of the Policy because Respondents are using the Domain Name, have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website, by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Complainant further alleges that Respondents’ website is offering for sale Complainant’s goods and other goods which directly compete with Complainant, including manually operated hand tools such as combination and specialty wrenches in sets; hex bit sockets and keys; master mechanic complete tool sets; screwdriver sets and open stock; socket sets, drive tools and open stock among other products. In so doing Respondents created a likelihood of confusion with the PT PERFORMANE TOOL Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Respondents respond that they had no knowledge that Complainant’s <performancetool.com> was in use when Respondents registered their Domain Name. Furthermore, the searches run by Respondents on the three major search engines and described above showed all traffic directed to Complainant’s website and not to Respondents’. Therefore, Respondents argue that they were not trying to intentionally attract Internet user by a likelihood of confusion with Complainant’s Mark.

As stated above, conducting limited searches through the three major search engines is not sufficient to overcome the element of confusing similarity. Likewise such a search is not sufficient to disprove a likelihood of confusion. Respondents do not deny that they are selling competitors’ tools, merely that they are not solely selling the goods of Complainant. Therefore, Respondents’ website is being operated for commercial gain.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy Paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy Paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <performancetools.net> is confusingly similar to Complainant’s registered PL PERFORMANCE TOOL Mark, (b) that Respondents have no rights or legitimate interest in the Domain Name and (c) that Respondents registered and used the Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: October 17, 2007