Designer Skin LLC v. S & L Vitamins, Inc., et al.
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 Whirlpool.com and Kitchenaid.com 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 Aceapplicance.com. 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 Whirlpoolparts.com and Kitchenaidparts.com. 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, Whirlpoolparts.com and Kitchenaidparts.com, 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 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:
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:
The Panel accordingly resolved this domain name dispute by directing the transfer of the domain names in dispute to Complainants.