MARK	REG. NO.	REG. DATE	GOODS
SKILSAW	774,056	July 28, 1964	Saws, including rotary saws, reciprocating saws, jig saws and chain saws
SKILSAW Des.	774,057	July 28, 1964	Saws, including rotary saws, reciprocating saws, jig saws and chain saws
SKIL	786,322	March 9, 1965	Electrically driven tools and accessories
SKIL Des.	786,323	March 9, 1965	Electrically driven tools and accessories
SKIL	774,054	July 28, 1964	Power-driven screwdrivers, drills, impact wrenches and accessories
SKIL Des.	774,055	July 28, 1964	Power-driven screwdrivers, drills, impact wrenches and accessories

The Disputed Domain Name was registered on May 6, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar with the SKIL and SKILSAW trademarks in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name and that Respondent registered and uses the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to Complainant’s contentions and is in default.

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).

In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.

In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must meet three requirements that will be considered in turn below.

A. Identical or Confusingly Similar

Complainant contends (and the Panel accepts as uncontroverted) that it has rights in the SKIL and SKILSAW trademarks and that the Disputed Domain Name is confusingly similar thereto.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing):

(a) since at least as early as 1928, Complainant and its predecessors and licensees have marketed and promoted its power tools throughout the United States under the SKIL and SKILSAW trademarks;

b) Complainant owns registrations for the SKIL and SKILSAW trademarks worldwide, including the valid, subsisting and “incontestable” US federal registrations listed above in Section 4 (“Factual Background”);

c) Complainant’s long use and promotion have made its SKIL and SKILSAW trademarks well-known and famous, and have created a strong secondary meaning signifying Complainant and the power tools and accessories sold under those trademarks throughout the world;

(d) the Disputed Domain Name is identical to Complainant’s SKILSAW mark; and

(e) the Disputed Domain Name is confusingly similar to Complainant’s SKIL mark (because it incorporates the SKIL mark in its entirety and adds trivially “saw”, the name of a common tool sold by Complainant with its SKIL trademark).

In conclusion, the Panel accepts Complainant’s supported contentions that it has rights in the SKIL and SKILSAW trademarks and that the Disputed Domain Name is confusingly similar thereto, and so concludes that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

Complainant contends (and the Panel accepts as uncontroverted) that Respondent has no rights or legitimate interests in the Disputed Domain Name.

In particular, Complainant contends (and the Panel accepts as uncontroverted) that: (a) Respondent has no relationship with Complainant and is not using the Disputed Domain Name, in connection with a bona fide offering of goods or services; and (b) Respondent is not commonly known by the Disputed Domain Name and has not acquired any trademark or service mark rights to that name.

Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal status (and in particular, federal registration in the United States) of the SKIL and SKILSAW trademarks, and Complainant’s contentions about the fame and secondary meaning in the marketplace with the SKIL and SKILSAW trademarks, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Name, likely do not exist.

The Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.

In particular, Complainant contends (and the Panel accepts as uncontroverted and convincing) the following: (i) the SKIL and SKILSAW trademarks have a strong reputation and are widely known and famous throughout the world; (ii) Respondent had more likely than not actual notice of Complainant’s rights in the SKIL and SKILSAW trademarks when it registered the Disputed Domain Name; (iii) Respondent uses the Disputed Domain Name to host a website with links to third-party sites that offer Complainant’s competitor’s power tools and accessories; (iv) Respondent uses the Disputed Domain Name to intentionally divert traffic to aforementioned website, away from “www.skil.com”, a website operated by Complainant’s corporate parent that informs about the power tools and accessories that are sold under the SKIL and SKILSAW trademarks; (v) Respondent has a long history of bad faith registration of domain names that incorporate well-known or famous trademarks and service marks in violation of the Policy; and (vi) there is no contemplated use of the Disputed Domain Name by Respondent that would be legitimate or lawful.

The Panel concludes that the third requirement of the Policy is met.

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 Name <skilsaw.com> be transferred to Complainant.

Mark Ming-Jen Yang
Sole Panelist

Dated: August 31, 2007

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0833.html

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