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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Whirlpool Properties, Inc., et al. v. Ace Appliance Parts and Service

Claim No. FA0204000109386 (NAF, May 24, 2002)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that a non-exclusive reseller of parts for Complainants' products does not have a right to use Complainants' mark in domain names 'pointing' to a web site at which parts for both Complainants' products, and those of its competitors, are sold.  The Panel accordingly directed the reseller to transfer the domain names in dispute to Complainants.

Complainants, Whirlpool Properties Inc. and Whirlpool Corporation (collectively "Whirlpool" or "Complainants") are major suppliers of goods and services associated with home appliances.  Complainants use the famous marks Whirlpool and KitchenAid in their business operations, for which marks they hold federal trademark and service mark registrations.  Complainants spend considerable sums advertising these marks, and operate web sites at both and which support their business activities.

Respondent Ace Appliance Parts and Service ("Ace Appliance") is an appliance parts and service company that has long sold parts for, and serviced, KitchenAid and Whirlpool appliances.  From 1973 until 2000, Ace Appliance sold such products and services from a store in Indiana.  Commencing in 1999, Ace sold such products on the Internet, which it continued to do up to the date of this decision, at a web site it operates at  This web site, which identifies itself as the site of "Ace Appliance," also offers for sale parts for appliances manufactured by a number of Complainants' competitors.

In January 1999, Respondent registered the domain names and  Respondent used these domains as "pointers" which took a user directly to its Ace Appliance web site. 

In late 2001, Respondent offered to sell the domains at issue to Complainants. Complainants were advised that if they failed to purchase them, the domain names would be put up for sale with a domain name broker.  Whirlpool responded with cease and desist letters and, when Respondent failed to discontinue its use of the domains, this UDRP proceeding.

Finding Whirlpool entitled to relief under the UDRP, the Panel directed Ace Appliance to transfer the disputed domain names to Whirlpool.

The Panel found that Whirlpool had established each of the three elements necessary to prevail on a UDRP claim.

First, the Panel found that the domain names at issue, and, were confusingly similar to Complainants' marks, which they incorporated in their entirety.  The inclusion of the word "parts" in these domain names did not lessen the confusion, as the dominant word in each domain name was Complainants' mark, and not the generic add-on "parts."  Said the Panel:

The domain name is confusingly similar to complainant's mark, WHIRLPOOL.  The disputed domain name is comprised of Complainant's mark and the generic term "parts."  Common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which the Complainant has rights.

The Panel next found that Ace Appliance had no 'legitimate interest' in the disputed domains.  Ace's status as a reseller did not create such an interest under the Panel's decision in Oki Data, WIPO Case No. D2001-0903 (2001) because Ace was using domain names containing Complainants' marks to promote the sale of both Complainants' products and those of its competitors.

Indeed, the Panel went on to note that other Panels had held that a non-exclusive distributor of a manufacturer's product can never have rights to use the mark in a domain name over the objection of the mark holder.  Said the Panel:

This is not a case where Respondent is an exclusive dealer appointed by Complainant to sell its goods and the dealer sells no competitor's products.  In cases of that type, Panels have been reluctant to find a lack of legitimate rights and interests and bad faith when the dealer registers and uses a domain name incorporating Complainant's trademark for the sale of Complainant's goods.  But where the registrant is one of many distributors of Complainants' products, the distributor has no right, over the objection of a trademark holder, to register and use a domain name that incorporates the trademark.  (citations omitted).

Finally, the Panel found that Ace Appliance had registered and used the domain names at issue in bad faith.  Under paragraph 4(b)(iv) of the UDRP, bad faith can be found where a party is using a domain name intentionally to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship or affiliation of its site.  The Panel found that such was the case here.  In so holding, the Panel rejected Respondent's argument that its use of these domain names was no different than posting signs in its store front location advertising the sale of Whirlpool or KitchenAid parts.  Said the Panel:

Respondent argues that it is simply doing what it has done for years, that is to say, selling Whirlpool and KitchenAid parts to consumers.  Respondent contends that the domain names are simply an extension of the posting of signs and advertisements in its store that announced availability of Whirlpool and KitchenAid parts for sale.  What Respondent fails to recognize is that posting signs in a store in Bloomington, Indiana, is very different from the use of the domain names on the Internet.  The Internet covers the entire country.  It converts Respondent from an operator in a small area to an operator on a national scale.  This does indeed lead to a conflict between Respondent and Complainant in the sale of parts throughout the country.

The Panel accordingly resolved this domain name dispute by directing the transfer of the domain names in dispute to Complainants.

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