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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pengo Corporation v. Drilling & Trenching Supply, Inc., David Moran

Case No. D2008-1690

1. The Parties

Complainant is Pengo Corporation, of Cedar Rapids, Iowa, United States of America, represented by Shuttleworth & Ingersoll P.L.C., of Cedar Rapids, Iowa, United States of America.

Respondent is Drilling & Trenching Supply, Inc., David Moran, of San Leandro, California, United States of America (“United States” or “U.S.”).

2. The Domain Names and Registrar

The disputed domain names <pengoauger.com> and <pengoaugers.com> (the “Disputed Domain Names”) are registered with eNom Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2008. On November 6, 2008, the Center transmitted by e-mail to eNom Inc. a request for registrar verification in connection with the disputed domain names. On November 6, 2008, eNom Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 12, 2008. 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 states that it “has continuously used the trademark PENGO for construction and agriculture attachments, including augers[,] since 1946” and that it is the owner of the following federal trademark registrations in the United States (each of which was supported by relevant evidence thereof):

- PENGO, U.S. Reg. No. 678,840, registered on May 19, 1959 for use in connection with “earth augers and parts thereof, boring heads, teeth for earth-digging equipment, traveller sheaves, drill heads, pulling eyes, hammers, cable pullers, reel winders, and wire stringers”.

- PENGO & Design, U.S. Reg. No. 936,981, registered on July 4, 1972, for use in connection with “earth augers and parts thereof, boring heads, teeth for earth-digging equipment, hand-type hammers, [cable pullers, reel winders, wire stringers, traveller sheaves, pulling eyes, marine winches, reel stands, and life support systems comprising underwater exploration chambers, winches for raising and lowering such chambers, and wires, cables, hoses and tubes for supplying air, power and telephone communications to such chambers]”.

- P PENGO PALADIN UTILITY & Design, U.S. Reg. No. 3,213,999, registered on February 27, 2007, for use in connection with “construction and agricultural equipment attachments, namely, earth augers, auger drives, boring heads, teeth for earth-digging equipment, and hydraulic hammers”.

(Emphasis added.)

The above trademarks are hereafter referred to collectively as the “PENGO Trademark”.

Complainant states that each of the Disputed Domain Names “actually diverted users to the Respondent’s web site at “www.drillingworld.com” a competing manufacturer of construction and agriculture attachments, including augers”.

Each of the Disputed Domain Names was created on October 28, 1999.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights because “[t]he domain names in dispute consist of Complainant’s registered trademark PENGO plus the precise goods for which Complainant uses and registered its mark; i.e., auger or augers”.

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the website associated with the Disputed Domain Names “does not advertise or promote any PENGO products”; “[t]here is no evidence the Respondent has been commonly known by the disputed domain names”; and “there is no use of the domain names apart from redirecting or diverting consumers to Respondent’s web site where Respondent advertises and promotes augers of its manufacture, unrelated to Complainant and Complainant’s products”.

- The Disputed Domain Names has been registered and is being used in bad faith because “Respondent registered the domain names primarily for the purpose of disrupting Complainant’s competitive business by redirecting or diverting consumers to Respondent’s web site [at “www.drillingworld.com”] where Respondent advertises and promotes augers of its own manufacture, completely unrelated to Complainant and Complainant’s products”; and “[I]t is likely a consumer looking for Complainant’s web site �pengoattachments.com’ would mistakenly believe the <pengoauger.com> or �pengoaugers.com’ web site is connected with the Complainant’s web site”.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in and to the PENGO Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the PENGO Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “pengoauger” and “pengoaugers”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

The Disputed Domain Names differs from the PENGO Trademark only by the addition of the words “auger” and “augers” to the Disputed Domain Names. Where, as here, a disputed domain name incorporates the whole of a complainant’s trademark, together with a descriptive phrase associated with a complainant and its renowned activities, the domain name is confusingly similar to the trademark. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (finding <playboyatthepalms.com> confusingly similar to the trademark PLAYBOY).

Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that the website associated with the Disputed Domain Names “does not advertise or promote any PENGO products”, “[t]here is no evidence the Respondent has been commonly known by the disputed domain names”; and “there is no use of the domain names apart from redirecting or diverting consumers to Respondent’s web site where Respondent advertises and promotes augers of its manufacture, unrelated to Complainant and Complainant’s products”.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not allege with specificity which, if any, of the four factors set forth above exists in this case, nor does Complainant cite any precedent under the Policy that Respondent’s actions constitute bad faith. Nevertheless, the Panel is readily convinced that the facts as described by Complainant (and unrebutted by Respondent) establish a clear case of bad faith as defined by paragraph 4(b)(iv) of the Policy, that is, that by using the Disputed Domain Names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site”. See, e.g., The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276 (“no plausible explanation can be found why the Respondent has adopted a domain name that is confusingly similar to the mark DOW to conduct business in direct competition with the Complainant”) and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 (finding bad faith where respondent registered the domain name <toyota-occasions.com> “with a view to distracting possible customers of the Complainants and attract them towards his own site in the mistaken belief that they are visiting an official web site of the Complainants”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

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 Disputed Domain Names <pengoauger.com> and <pengoaugers.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: December 18, 2008