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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Crown Equipment Corporation v. Vogler Equipment

Case No. D2003-0117

 

1. The Parties

The Complainant is Crown Equipment Corporation, Ohio, United States of America, represented by Killworth, Gottman, Hagan & Schaeff, L.L.P of United States of America.

The Respondent is Vogler Equipment, Miami, Florida, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <crownforklift.com> and <crownforklift.info> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2003. On February 18, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On February 22, 2003, eNom 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 February 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2003.

The Center appointed Ms Angela Fox as the sole panelist in this matter on March 28, 2003. 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

The Complainant trades in material handling equipment and related distributorship, maintenance and training services. Its product line includes hand trucks, pallet trucks, stackers, stock pickers, fork lifts and other lifting, transporting and handling equipment. Based in Ohio, the Complainant is the fifth largest manufacturer of material handling equipment in the world.

The Complainant has built its business around its company name and trademark, CROWN. The CROWN trademark was adopted at least as early as 1959 and the Complainant has used it continuously since then. The Complainant has registered CROWN alone and with other elements as a trademark for material handling equipment and related services around the world, including in the United States, European Union, Australia, Brazil, Canada, France, Mexico, the Philippines, South Africa, Switzerland and the United Kingdom.

Annexed to the Complaint were details of the Complainant’s United States federal trademark registrations 805539 CROWN for material handling equipment including lift trucks dating from March 15, 1966; 1055508 CROWN [Stylised] also covering lift trucks and fork lift trucks from January 4, 1977; 1174919 CROWN [Stylised] for electrical replacement parts for material lifting, transporting and handling equipment from October 27, 1981; and 2617311 CROWN LIFT TRUCKS for goods including structural parts and fittings for material lifting, transporting and handling vehicles, and related maintenance, repair, distributorship and training services dating from September 10, 2002. Exclusive rights in the descriptive words LIFT TRUCKS were disclaimed.

Also annexed were details of the Complainant’s Community Trademark registrations 186726 CROWN and 161778 CROWN [Stylised] for inter alia lift trucks and fork lift trucks dating from April 1, 1996; and United Kingdom trademark registration 1533239 CROWN for inter alia fork lift trucks, dating from April 20, 1993.

The Respondent did not file a response, but the Complainant annexed print-outs from the website "www.voglerequipment.com" which describe the Respondent as a "well established, rapidly growing sales and services company" specialising in material handling equipment. The Respondent’s name appears above a banner reading "Since 1974" and "Florida’s Largest Distributor of Storage and Material Handling Equipment."

The Respondent registered the domain names <crownforklift.com> and <crownforklift.info> on August 20, 2002 and October 26, 2002, respectively. Both re-route the visitor to a third, apparently unconnected, website, "www.materials-handling-eqp.com". Annexed print-outs from that site show a prominent logo for Materials Handling Equipment Company of Denver, Grand Junction and Colorado Springs, Colorado. The website offers inter alia fork lift rentals, used and reconditioned fork lifts and fork lift operator training. It lists five different lift truck brands which are carried. The Complainant’s CROWN range does not appear, but the website describes the list as partial and invites visitors to call a number on the screen for a complete catalogue.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s domain names are confusingly similar to the CROWN trademarks. It argues that the element FORKLIFT merely describes a common type of lift truck sold by the Complainant and cannot avoid confusion.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the domain names. The Complainant has not authorized the use of its trademark by the Respondent, nor has the Respondent commonly been known by a name corresponding to the domains. The Respondent could not itself be said to be using the domain names in connection with a bona fide offering of goods or services since the domains re-route visitors to an unrelated website with no apparent connection to the Respondent. Moreover, the use could not be bona fide in any event because as a business active in the same field, the Respondent must have been aware of the Complainant’s CROWN trademarks and the scope for confusion arising from the use of similar domain names to re-route visitors to a site carrying competing goods. The Complainant inferred that the Respondent was likely to be profiting from the re-routing, making a legitimate noncommercial or fair use of the domains unlikely.

Finally, the Complainant argues that the domain names were registered and are being used in bad faith. The Respondent is alleged to be seeking commercial gain by using confusingly similar domain names to redirect Internet users to a website offering products of the Complainant’s competitors, thereby disrupting the Complainant’s business. The Complainant asserts a reputation in the CROWN trademarks in the material handling equipment field and considers that the Respondent, as a business operating in that field, knew or should have known of the CROWN trademarks and reputation. The domain name registrations are, in the Complainant’s view, explained only by the Respondent’s intent to profit either directly or indirectly from the confusion of Internet users.

B. Respondent

The Respondent did not respond to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, in order to succeed in an administrative proceeding a complainant must prove all three of the following:

(1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(2) the respondent has no rights or legitimate interests in the domain name; and

(3) the domain name has been registered and is being used in bad faith.

All three elements must be proved to the satisfaction of the Panel before any relief can be granted.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns rights in the trademark CROWN and trademarks incorporating CROWN by annexing to the complaint copies of its United States, United Kingdom and European Union trademark registrations.

The Respondent’s domain names incorporate the Complainant’s trademark in its entirety, with the addition only of the term FORKLIFT and the generic top-level domains .com and .info. It is well-established that top-level domains are not distinctive and may be disregarded when comparing domain names to complainants’ trademarks. The question is therefore whether the additional element FORKLIFT is enough to avoid confusion between the domain names and the Complainant’s CROWN trademarks.

The term "fork lift" is the common English name for a vehicle with steel prongs used for lifting, carrying and stacking goods. The Complainant sells these vehicles under its CROWN trademarks and has protected the marks in respect of them. The presence in the Respondent’s domain names of a word which describes an item in the Complainant’s product range reinforces rather than dilutes the connection between the subject domain names and the Complainant. There is no element within the domain names that points away from the Complainant, only elements that point to it. There is no doubt, in the Panel’s view, that the domain names are confusingly similar to the Complainant’s CROWN trademarks.

Other Panels have adopted similar reasoning where additional matter was relevant to a complainant’s business. The Complainant drew support from some of these decisions, including Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413, where <chanelstore.com> and <chanelfashion.com> were found confusingly similar to the CHANEL retail fashion trademark; Brown & Bigelow, Inc. v. Bostjan Rodela, NAF Case No. FA0096466, where <hoylecasino.net> was held confusingly similar to the HOYLE gaming trademark; Telstra Corporation Limited v. Ozurla, WIPO Case No. D2001-0046, where 15 domain names including <telstracommunications.com> and <telstramobiles.com> were held confusingly similar to the TELSTRA telecommunications trademark; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275, in which <catmachines.com> was held confusingly similar to the earlier CAT earth moving and construction machinery trademark; and Parfums Christian Dior v. 1Netpower, Inc., WIPO Case No. D2000-0022, where <christiandiorcosmetics.com>, <christiandiorfashions.com>, <diorcosmetics.com> and <diorfashions.com> were held confusingly similar to the CHRISTIAN DIOR and DIOR cosmetic and fashion trademarks.

In line with this reasoning, the Panel finds that the Respondent’s domain names are confusingly similar to the Complainant’s CROWN trademarks.

B. Rights or Legitimate Interests

The Panel accepts that the Complainant has not authorized the Respondent to use the CROWN trademarks, and that there is no evidence that the Respondent has commonly been known by a name corresponding to the domains.

Under paragraph 4 (c) (i) of the Policy, however, the Respondent could still be considered to have a right or legitimate interest in the domain names if, before any notice of the dispute, it had been using the domains in connection with a bona fide offering of goods or services. In this case, the Respondent’s domain names re-route Internet visitors to a website which offers material handling equipment and related services. There is an offering of goods and services connected with the use of the domain names, and no suggestion that the offering did not predate notice to the Respondent of the dispute. Deep misgivings, however, surround the idea that such behaviour can constitute use by the Respondent in connection with a bona fide offering of goods and services, on the Complainant’s uncontested facts.

There are two principal reasons for this. First, the Respondent cannot in the view of the Panel be said with any confidence to have been using the domain names in connection with an offering of goods and services. The verb "to use" is defined in Chambers 20^th Century Dictionary as "to put to some purpose," or "to avail oneself of." The words "purpose" and "avail" denote control on the one hand and benefit on the other. Under the Policy, the object of that control and the source of the benefit is clear: the Respondent must be putting the domain names to the purpose of conducting a bona fide, commercial offering of goods or services.

In this case, the Respondent’s domain names are linked to a site that is manifestly not the Respondent’s own, offering goods and services from a Colorado-based entity with no apparent links to the Florida-based Respondent. In the absence of any explanation from the Respondent, there is real doubt that it controlled that offering or derived a commercial benefit from the sale of the goods or the provision of the services. The Panel accepts that the Respondent is unlikely to have permitted its domain names to be used by another as a re-routing tool unless it were deriving some benefit from it, but that benefit need not have been a share of the profits. It could equally plausibly have been a simple remuneration for each Internet user diverted to the "www.materials-handling-eqp.com" site. As the Respondent has taken no steps to deny this or to explain its relationship with the "www.materials-handling-eqp.com" site, the Panel is not prepared to regard this re-routing as use by the Respondent in connection with an offering of goods and services.

Secondly, even if the Respondent had been using the domain names in connection with an offering of goods and services, that offering could not be said on these uncontested facts to be bona fide. The Respondent may not have filed a response, but it speaks nonetheless. The "www.voglerequipment.com" website print-out annexed to the Complaint shows a site promoting the business of an entity with the same name and address as the Respondent and which the Respondent has not sought to repudiate. On that site, the Respondent claims to have been trading since 1974 and to be a "well established" specialist in the material handling equipment field, indeed, the largest distributor of such products in Florida. That a well-established, sizeable specialist distributor in such a field might be unaware of the fifth-largest manufacturer of such products in the world, which is based in the same country and had been trading for all the years of that distributor’s commercial life is possible, but not likely. All the evidence in this case points to the Respondent’s probable knowledge of the Complainant’s CROWN trademarks before the domain names were registered.

The use of domain names which were confusingly similar to the Complainant’s trademarks was very likely to mislead Internet users. Their re-routing to a site carrying competitors’ similar products would do little to dispel that confusion and much to prolong it, to the detriment of the Complainant. That the Respondent can on the uncontested facts be taken to have known about the Complainant’s trademarks and business makes it likely that the Respondent was seeking to capitalise on that confusion. Such intent cannot give rise to bona fide commercial use of the domain names.

Similar reasoning has been applied in other decisions cited by the Complainant, including Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127, in which the Panel held that "bad faith use of a domain name does not establish rights or legitimate interests in respect of such name in the sense of paragraph 4(a)(ii) of the Policy;" Ltd Commodities, Inc. v. CostNet/Domain Manager, WIPO Case No. D2002-0031, in which the Panel remarked, "It is obvious that by adopting a domain name that is confusingly similar to the service mark of the Complainant to attract and divert persons, then using the domain name as an automatic referral of such persons to third party sites who offer, by Internet advertisement, services and products like those of the Complainant, the Respondent is not conducting a legitimate business;" Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629 in which the Panel stated, "…Where someone in the same or a similar field as the Complainant would not have chosen the domain name unless seeking to create the impression that there was some association with Complainant, there can be no rights or legitimate interests in respect of the domain name;" and NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768, where the Panel held that "…Use of the contested domain name as an instrumentality for re-directing Internet users…away from the Complainant’s website to a commercial website of its direct competitor clearly does not constitute legitimate use."

The Panel agrees with the reasoning in these cases and finds that even if the Respondent was using the domain names in connection with an offering of goods and services, that offering was not bona fide.

The Panel accepts that the partial nature of the list of brands stocked on the "www.materials-handling-eqp.com" site leaves open the possibility that the operator did actually trade in the Complainant’s CROWN-branded fork lifts. However, even if this had been shown, the Panel would not have considered it a plausible basis for a right or legitimate interest on the part of the Respondent. As previously stated, there is no evidence that the Respondent was itself using the domain names in connection with an offering of goods and services, as opposed to allowing the domains to be used by another as a re-routing tool. Equally important, however, the use of domain names which are inherently likely to encourage assumption of an affiliation with the Complainant’s business to lure visitors to a site where competitors’ products are also, and indeed more prominently, stocked, is not in the Panel’s view a fair or legitimate use.

This line of reasoning has been adopted in other cases, notably in Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413. In that case, the respondent used the complainant’s mark in domain names which led visitors to a database containing information not only on the complainant, but also on other fashion retailers. The Panel observed, "Fair use allows Respondent to use Complainant’s trademark when providing information on Complainant and the rest of the fashion industry…Thus, Respondent’s database at "DesignerGlobe.com" can talk about "Chanel" stores and "Chanel" products. In contrast, it would not be fair use for Respondent to use Complainant’s trademark outside a shop or office to entice customers in to use its database. The same logic applies in cyberspace…" The Panel agrees with this reasoning. It is not fair use to entice visitors into a shop or a website by creating an inaccurate impression of affiliation with the proprietor of a trademark. It makes no difference that such misleading use might accurately describe some of the wares on offer. The principal characteristic of such use is not its partial descriptiveness, but its wholesale deceptiveness.

In light of all the above, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Paragraph 4 (b) (iv) of the Policy provides that it shall be evidence of registration and use of a domain name in bad faith if the Panel finds that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on it.

As set out in detail above, the Panel is satisfied that the Respondent, who is active in the Complainant’s field, was likely to have known of the Complainant’s CROWN trademarks before the domain names were registered. The Respondent’s having permitted the domain names to be re-routed to the "www.materials-handling-eqp.com" website can be taken, in the absence of evidence to the contrary, to be intentional rather than inadvertent. The domain names were inherently likely to cause Internet users to assume that the site to which the domain names led was in some way related to the Complainant and its CROWN family of products. The uncontested facts give rise to a strong inference that the Respondent knew this.

The Panel considers that the Respondent intentionally attempted to attract Internet users to the "www.materials-handling-eqp.com" website by adopting domain names which the Respondent can reasonably be assumed to have known would create a likelihood of confusion as to source or affiliation with the Complainant’s trademark. The Panel considers it more likely than not that commercial gain to the Respondent was involved, even though the exact nature of that gain cannot be determined with certainty. It is unlikely that the Respondent would have permitted the use of its domain names for re-routing purposes unless it would derive some benefit.

The Respondent’s re-routing activities threaten to disrupt the Complainant’s business and deceive the public. Such activities have been held to constitute bad faith use and registration in among others NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768. The Panel agrees with the reasoning in that case and finds that the Respondent registered and used the contested domain names 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 names <crownforklift.com> and <crownforklift.info> be transferred to the Complainant.

 

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Angela Fox
Sole Panelist

Date: April 9, 2003