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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Work 'N Gear, LLC v. Domaincar

Case No. D2006-0267

 

1. The Parties

The Complainant is Work 'N Gear, LLC, Anthony DiPaolo, Weymouth, United States of America, of United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Names and Registrars

The disputed domain names <wearngear.com> and <work-n-gear.com> are registered respectively with Capitoldomains, LLC and BelgiumDomains, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2006. On March 3, 2006, the Center transmitted by email to Capitoldomains, LLC and BelgiumDomains, LLC a request for registrar verification in connection with the domain names at issue. On March 3, 2006, Capitoldomains, LLC 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. On March 7, 2006, BelgiumDomains, LLC 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 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2006.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 5, 2006. 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, Work ‘N Gear, LLC, a New York corporation, is a clothing retailer that sells a variety of boots, uniforms and other rugged or specialized work apparel and accessories made by a number of other companies. The Complainant operates in many locations throughout the United States.

As early as 1978, Work ‘N Gear’s predecessors in interest began using the trademark WORK ‘N GEAR in connection with articles of clothing. In August 1993, Work’ N Gear predecessors in interest began using the trademark WORK ‘N GEAR in relation to a chain of successful work clothing stores, selling clothes and footwear for working people, including a range of shirts and pants, uniforms, medical clothing, footwear, and related items.

In fact, the Complainant stressed that in connection with the mark WORK ‘N GEAR it sells tens of millions of dollars worth of goods per year, and to ensure that consumers are aware of such trademark the Complainant has spent millions of dollars in the advertising and promotion of its marks in generating the goodwill associated with them.

Complainant is the owner in the United States of trademarks containing the words WORK ‘N GEAR, as disclosed in the schedule below,

Trademark

Registration No.

Issuance date

WORK ‘N GEAR

U.S. 1,129,299

January 15, 1980

WORK ‘N GEAR

U.S. 1,894,434

May 16, 1995

WORK ‘N GEAR AMERICA’S WORK WEAR STORE

U.S. 1,899,015

June 13, 1995

WORK ‘N GEAR AMERICA’S WORK WEAR STORE

U.S. 1,899,339

June 13, 1995

WORK ‘N GEAR

U.S. 3,032,311

December 20, 2005

In addition the Complainant or its predecessors in interest registered the domain name <workngear.com> on September 29, 1995, and has been using this domain name to display its merchandising since at least as early as 1996.

The Complainant alleges that the Respondent and several other companies related to it were also a party in various other UDRP proceedings, whereby the concerned domain names were transferred as a result of UDRP decisions.

The Respondent registered the disputed domains <work-n-gear.com> with Belgium Domains LLC on December 28, 2005, and <wearngear.com> with CapitolDomains LLC on December 10, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several trademark registrations in the United States, as shown in the table above for trademarks formed the expression “WORK ‘N GEAR”.

The disputed domain names <wearngear.com> and <work-n-gear.com> are a confusingly similar variation of all Complainant’s registered trademarks formed by the expression “WORK ‘N GEAR”. In effect, the domain name <wearngear.com> merely replaces the word “WORK” found in the Complaint’s trademarks and domain name by the word “WEAR” which coincidently has the same starting consonant “W” and identical number of letters as the word “WORK”. Besides the word “WEAR” is also part of Complainant’s trademark WORK ‘N GEAR AMERICA’S WORK WEAR STORE.

In addition, the disputed domain name <work-n-gear.com> contains in its entirety the Complainant’s trademarks, with the only difference that the domain name has dashes between the words. Therefore, the requirement of the Policy, Paragraph 4(a)(i) is fully met.

Complainant argues that by the time the Respondent registered the disputed domain names, it was impossible for the Respondent to be unaware of the Complainant’s trademarks. In fact, the Complainant and its predecessors in interest began using the trademark WORK ‘N GEAR at least as early as 1978, almost 27 years before any use Respondent may have made of the disputed domain names. Besides the Complainant’s trademarks were issued long before Respondent registered the disputed domain names, leading the Complainant to assume that Respondent had constructed knowledge of the Complainant’s trademarks.

Complainant argues that the Respondent is not a licensee of Complainant, nor is the Respondent authorized to use Complainant’s trademarks. In addition Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services, is not commonly known by the disputed domain names and is not making a legitimate non-commercial or fair use of the disputed domain names without the intent for commercial gain. In fact, the Complainant alleges that the Respondent is misleading Internet users who are looking for the Complainant’s website by providing links to sponsored websites containing a variety of topics associated with WORK ‘N GEAR’s business.

It is argued that the reputation of the Complainant’s trademarks acquired through millions of dollars spent in promotion and advertising of Complainant’s marks lured the Respondent’s greed, proving the Respondent’s intention to attract visitors otherwise intending to visit Complainant’ website by creating and exploiting a likelihood of confusion with Complainant’s trademarks. In addition, by means of the disputed domain names the Respondent appears to have the intent to obtain financial gain since the disputed domain names leads to websites where sponsored links on a variety of topics are shown, therefore Respondent is presumably paid a portion of revenues generated by users who click on the sponsored advertisements.

Thus, there is no doubt that the Respondent registered the disputed domain names to create confusion as to the source sponsorship, affiliation, and/or endorsement of the domain names with the trademarks of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

(iii) That the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The Complainant has several registered trademarks concerning the designation WORK ‘N GEAR, which substantially pre-date the Respondent’s registration of the domain names.

The only difference, between the disputed domain names and the Complainant’s WORK ‘N GEAR trademarks, is the addition of dashes in the domain name <work-n-gear.com> and the replacement of the word “WORK” by the word “WEAR” in the domain name <wearngear.com>.

Because the addition of dashes do not aggregate any distinctiveness to the expression the Panel finds that the domain name <work-n-gear.com> is identical to the Complainant’s registered trademark WORK ‘N GEAR.

In connection with the domain name <wearngear.com> the Panel finds that it is confusingly similar to the registered trademark WORK ‘N GEAR. The Complainant’s trademark is used in connection with clothing articles, i.e. articles that a customer could wear, and thus the likelihood of confusion between WORK ‘N GEAR and “WEARNGEAR” seems evident.

In this context, the Panel finds that the domain names <work-n-gear.com> and <wearngear.com> both meet the Policy requirement as the first is identical and the second is confusingly similar to Complainant’s trademark WORK ‘N GEAR.

B. Rights or Legitimate Interests

The Panel understands that under paragraph 4(a) (ii) of the Policy the overall burden of proof is on Complainant. However, once the Complainant presents a prima facie evidence that the Respondent lacks rights or legitimate interest the burden shifts to the Respondent as already seen in WIPO Case No. D2001-0121; Julian Barnes v. Old Barn Studios and WIPO Case No. D2004-0110; Belupo d.d. v. Wachem d.o.o.

Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain names. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Complainant’s contention that its registered trademarks WORK ‘N GEAR pre-dates the Respondent’s registration of the domain name is accurate. The Panel agrees that it was indeed unlikely that the Respondent was unaware of the Complainant’s trademarks.

In addition, Respondent does not run any business associated with the disputed domain names. Accordingly, the use of the domain names <work-n-gear.com> and <wearngear.com> are not considered legitimate use in connection with bona fide offering of goods and services.

Given the circumstances the Panel finds that Respondent has no right or legitimate interest in respect to the domain names (the Policy, Paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the policy specifies certain non-exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.

The Panel is convinced that Respondent was aware of Complainant’s trademark rights at the time of registration of the disputed domain names, particularly because Respondent appears to have associated the domain names to websites with links with a variety of topics related to the Complainant. This unquestionable knowledge of the Complainant’s trademarks is confirmed by the fact that the disputed domain name <work-n-gear.com> contains in its entirely the Complainant’s trademark WORK ‘N GEAR and that the domain name <wearngear.com> simply replaces the word “WORK” found on the Complainant’s trademark by the word “WEAR” which is without doubt connected to the activities of the Complainant.

Although the Complainant did not submit any evidence that shows that the Respondent has gained commercial profit, the Panel could infer through the evidence submitted by the Complainant that the Respondent receives compensation. In effect, the domain names refer to websites containing a search engine and a portal operated by <apps5.oingo.com>, a pay-per-click search engine affiliated with the Google AdSense Domain Program, which provides links on a variety of topics related to the Complainant’s activities.

Thus, the Panel understands that in using the domain names, the Respondent has intentionally attempted to attract for commercial gain, Internet users to websites with links with a variety of topics associated with the Complainant, as a result the Respondent created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement.

Accordingly, the Panel determines that Respondent has acted in bad faith within the meaning of Paragraph 4(b)(iv) 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 domain names, <work-n-gear.com> and <wearngear.com> be transferred to the Complainant.


Gabriel F. Leonardos
Sole Panelist

Dated: April 20, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0267.html

 

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