RockHardTools.com: UDPR states you don’t have to use the #domain to prove fair use

The registrant of the domain RockHardTools.com formed a proprietorship in 2010, calling it “Rock Hard Tools.”

No surprises there, except the mark ROCKHARD had been registered by another company, Rockhard Tools, Inc., in 2006.

The ensuing UDRP explains how the Respondent is the domain’s custodian, registered for a sole proprietorship run and owned by Mr. McClure’s daughter Tamera Lynne Messick. Rock Hard Tools exclusively sells farm tractor components and accessories that are offered by Wasco Hardfacing Co., an entity that is owned by Mrs. Messick and her husband.

The Forum (NAF) panelist received an interesting response to the Complainant’s observation about use, seeing no actual web site or MX records for it: You don’t have to use the domain as an active web site in order to establish fair use.

With respect to the fact that the disputed domain name resolves to a “Coming Soon” website and has no associated MX records, the Panel notes that, in supporting a claimed bona fide offering of goods or services, ¶ 4(c)(i) of the Policy does not require use of a disputed domain name itself. Its language also contemplates use of “a name corresponding to the domain name”.

Since the Respondent’s business name is “Rock Hard Tools” there is no need to provide much of a content on the resolving web site, although it does help establish a case.

Final decision: Deny transfer of the domain RockHardTools.com to the Complainant.

The domain transfer was denied.

Rockhard Tools, Inc. v. jeff mcclure

Claim Number: FA2205001998526

PARTIES

Complainant is Rockhard Tools, Inc. (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, Michigan, USA. Respondent is jeff mcclure (“Respondent”), represented by Mario C. Vasta of Fennemore Craig, P.C, Arizona, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with NameCheap, Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Steven M. Levy, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 31, 2022; the Forum received payment on May 31, 2022.

On May 31, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rockhardtools.com. Also on June 3, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on June 22, 2022.

On June 30, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Rockhard Tools, Inc., is a maker of power tools. Complainant has rights in the trademark ROCKHARD through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,164,592 issued on October 31, 2006). Respondent’s domain name, registered on July 22, 2010, is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ROCKHARD mark in its entirety and adds the generic term “tools” and the “.com” generic top-level domain (“gTLD”).

Respondent has no legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed to Respondent any rights in the ROCKHARD mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services nor does it make a legitimate noncommercial or fair use thereof. Instead, the disputed domain name resolves an webpage that says only “Coming Soon” and there are no associated mail exchange (MX) records indicating that the domain name is not being used for email.

Respondent registered and uses the domain name in bad faith. Respondent initially accepted but then rejected Complainant’s offer to buy the domain name. Respondent takes advantage of Complainant’s well-known mark to divert customers for commercial gain. The disputed domain name resolves to an inactive webpage. Respondent also makes use of a privacy service to hide its identity.

B. Respondent

Respondent, Jeff McClure, is the registrant and custodian of the domain name on behalf of Rock Hard Tools, a sole proprietorship run and owned by Mr. McClure’s daughter Tamera Lynne Messick. Rock Hard Tools exclusively sells farm tractor components and accessories that are offered by Wasco Hardfacing Co., an entity that is owned by Mrs. Messick and her husband. The ROCKHARD mark is commonplace and descriptive in nature. Further, the word “tools” relates to the nature of Respondent’s farm equipment business. All of this means that the disputed domain name is not confusingly similar to Complainant’s mark.

Respondent has legitimate rights and interests in the disputed domain name. Respondent registered to reflect the nature of its business, which is licensed and conducted under the same name. Respondent is commonly known by the disputed domain name and Complainant’s ROCKHARD mark is not widely known. Respondent registered and uses the disputed domain name for a bona fide offering of goods or services.

Respondent registered the domain name in good faith. That the disputed domain name resolves to an inactive webpage is not relevant as Respondent conducts business under the name Rock Hard Tools. Complainant’s ROCKHARD mark is not notorious and Respondent has not attempted to divert Complainant’s customers for commercial gain as its products are significantly different from those offered for sale by Complainant. Further, Complainant’s offer to purchase the disputed domain was unsolicited and unreasonable and it has engaged in coercive business tactics. Finally, Respondent has actively engaged with Complainant and sought to avoid spam messages so its use of a WHOIS privacy service for the disputed domain name is irrelevant to the proceedings.

FINDINGS

– Complainant has demonstrated its ownership of rights in the trademark ROCKHARD and that the domain name is confusingly similar to such mark;

– Respondent has provided sufficient evidence to support the claim that it is operating a legitimate business and making a bona fide offering of goods or services under the disputed domain name and, further, that it is commonly known by the domain name;

– There is insufficient evidence to conclude that Respondent registered or used the disputed domain name in bad faith based on Respondent rejecting Complainant’s offer to buy the domain name or that it attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain; and

– Despite some overreaching arguments and unsupported statements by Complainant, it has not, by a slim margin, engaged in reverse domain name hijacking.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant asserts rights in the ROCKHARD mark based upon its registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS trademark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”) Since Complainant provides evidence of registration of the ROCKHARD mark in the form of screenshots from the USPTO website, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).

Next, Complainant argues that Respondent’s domain name is identical or confusingly similar to Complainant’s ROCKHARD mark. The addition of a gTLD and a descriptive term typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”) Here, the disputed domain name contains the ROCKHARD mark in its entirety while adding in the term “tools” and the “.com” gTLD. Therefore, the Panel find the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

While Respondent contends that the domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel notes that this portion of the Policy considers only whether the disputed domain name is identical or confusingly similar to Complainant’s mark in its appearance, sound, or meaning and does not concern itself with the broader tests for “likelihood of confusion” as applied by various courts. See Heaven Hill Distilleries, Inc. v. Contact Privacy Inc. Customer 0157950512 / Andrea Latimer, Latimer, D2020-1612 (WIPO Sep. 14, 2020) (“the Panel notes that the addition of an “s” to the Complainant’s HEAVEN HILL Trademark does not change the sight, sound, or meaning of the Trademark for purposes of this factor.”) Given the use of the entirety of Complainant’s trademark in the disputed domain name, followed by a generic term, and one that specifically relates to Complainant’s line of business, the Panel finds that the domain name is confusingly similar to the ROCKHARD mark within the meaning of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant contends that Respondent lacks rights or legitimate interests in the domain name since Respondent is not commonly known by this name, It is undisputed that Complainant has not authorized Respondent to use the ROCKHARD mark and Complainant further asserts that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Such assertions may be appropriate in light of the public attributes of a disputed domain name such as its WHOIS record and website resolution. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”); EMVCo, LLC c/o Visa Holdings v. Domain Administrator/ China Capital Investment Limited, FA 1732580 (Forum June 26, 2017) (finding that the disputed domain names resolved to “webpages that recite only the words: ‘Coming Soon’” and therefore holding that “[i]n the circumstances here obtaining, this use of the domain names is neither a bona fide offering of goods or services under Policy¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)…”) The WHOIS record for the domain name, as revealed to the Forum by the concerned Registrar, identifies the Respondent as “jeff mcclure” and Complainant has submitted evidence that the domain name resolves to a website that contains only the message “Coming Soon” and that it is not used by Respondent for email. It is also claimed that Complainant “was unable to find a company registration for any variant of the ‘Rock hard tools’ name.” In sum, the Complaint states that “[t]o the best of Complainant’s knowledge, Respondent does not operate a business or advertise under the name ‘Rock hard tools.’”[i] This evidence creates a prima facie case that Respondent lacks rights or legitimate interests.

In response, Respondent submits both his signed declaration and that of his daughter, Tamera Lynne Messick (“Mrs. Messick”). Both documents state that Respondent is responsible for I.T. support and serves “as custodian of the disputed domain name as an agent for” a company named Rock Hard Tools, a sole proprietorship that is owned and operated by Mrs. Messick as of July, 2010. This entity exclusively offers the products of Wasco Hardfacing Co. (“Wasco”), a business owned by Mrs. Messick and her husband that sells tractor components and accessories. Respondent states that he purchased the domain name in 2010 but that Rock Hard Tools is the effective owner thereof. Finally, he states that “Respondent has a legitimate purpose in selling farm tools under the company name ‘Rock Hard Tools’ directly related to its Domain” and that Rock Hard Tools intends to use the disputed domain name for online sales as Mrs. Messick has expressed her intention of expanding her business to a digital store front. This intention to use the domain name for the online sale of farm tools is similarly stated in the declaration of Mrs. Messick. Submitted into evidence in support of these assertions are a Fictitious Business Name statement for “Rock Hard Tools” filed with a county clerk in the state of California on July 22, 2010, the same date on which the disputed domain name was registered; a 2010 Business License Application for the name “Rock Hard Tools” which specifies the description of the business as “online sales of farm tools”; a Seller’s Permit for “Rock Hard Tools” issued by the California Department of Tax and Fee Administration; and a letter from Mr. Messick’s Certified Public Accountant stating that she has acquired a US Federal Employer Identification Number (EIN) for the Rock Hard Tools business. Finally, Respondent submits copies of customer invoices dated August 1, 2010, February 4, 2022, and June 2, 2022 listing the issuing entity as “Rock Hard Tools”. Complainant has not contested any of these statements or evidence.

With respect to the fact that the disputed domain name resolves to a “Coming Soon” website and has no associated MX records, the Panel notes that, in supporting a claimed bona fide offering of goods or services, ¶ 4(c)(i) of the Policy does not require use of a disputed domain name itself. Its language also contemplates use of “a name corresponding to the domain name”. Further, evidence of the sort submitted by Respondent in this case has been held, in past decisions under the Policy, to support a finding that a respondent is using a disputed domain name to make a bona fide offering of goods or services or that it is commonly known thereby under Policy ¶ 4(c)(i) or ¶ 4(c)(ii) respectively. See, e.g., Garcoa, Inc. v. Janeen Arshan / Nature’s Beauty Mix LLC, FA 1937648 (Forum May 17, 2021) (“Respondent has submitted evidentiary proof of Articles of Organization for ‘Nature’s Beauty Mix, LLC’ filed with the NYS Department of State, and in use for over 4 years.”); Full Life, LLC v. Devon Brooks / Stellar Guidance Technologies INC, FA 1940085 (Forum May 24, 2021) (“Respondent has provided copies of receipts displaying the SPHERE mark sent from Stellar Guidance Technologies, Inc. to customers…”) In view of the uncontested evidence submitted by Respondent, the Panel finds that it has successfully carried its burden of proof and has rebutted Complainant’s prima facie case by showing that it is making a bona fide offering of goods or services under the name Rock Hard Tools and also that it is commonly known by such name. Thus, Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As Respondent has satisfied the requirements of ¶ 4(a)(ii) of the Policy, it is not strictly necessary to consider the issue of bad faith. However, Complainant has raised relevant questions concerning bad faith registration and use and so the Panel will provide further explanation of the grounds for its decision. Complainant argues that Respondent registered and uses the domain name in bad faith because Respondent rejected Complainant’s offer to buy the disputed domain name. Further, it asserts that Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Registering a domain name with the intention of selling it to a complainant supports a finding of bad faith under the express language of Policy ¶ 4(b)(i). Furthermore, use of a domain name that is confusingly similar to and specifically targets a complainant’s mark can be evidence of a bad faith where it is used in an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See, e.g., Backcountry.com, LLC v. Ryeub Uhfry, FA 1997301 (Forum June 21, 2022) (bad faith found where the “disputed domain name was chosen and registered with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the mark.”) Finally, non-use of a domain name may support a finding of bad faith under the doctrine of “passive holding”. Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

With regard to Complainant’s first point, copies of correspondence between the parties have been submitted, spanning the dates of February 24, 2022 to June 17, 2022. The initial query, an email directed to, and submitted into evidence by Respondent, states “We are interested in acquiring the RockHardTools.com domain name…” and goes on to say “We’d like to make an offer ASAP.” This is from an individual who identifies themself as “Head of Software Development” and who uses an email address related to a human resources and IT support firm. No mention is made of Complainant or its trademark. Further exchanges are submitted into evidence by Complainant but all email addresses in these screenshots are redacted. The initial purchase offer is made in the amount of US $500 to which Mrs. Messick responds with a counteroffer of $15,000. A subsequent email from Mrs. Messick, in which a lower counteroffer is made, contains the statement “Please be aware that this is our company name, it is in use and that adjusting our domain name not [sic] we take lightly.” On April 5, 2022, the corresponding parties finally settle on a price of $10,000 and the buyer states “we are having our attorney’s [sic] write an agreement for the domain transfer.” On April 7, 2022, an email is sent to Mrs. Messick from an attorney who indicates their representation of Complainant, asserts rights in the ROCKHARD trademark, and offers $500 for a transfer of the domain name stating that Mrs. Messick is “misappropriating the Rockhard Tools brand” and is trading on its goodwill. The same day, Mrs. Messick sends an email to the individual with whom she has already been corresponding, noting the lawyer’s letter and stating that she will no longer be selling the domain name. She states “This attempt at force is in bad faith and is bad business.” An April 11, 2022 email to Mrs. Messick states that the lawyer’s letter was sent in error due to an internal communication problem and asks to move forward with the domain name purchase at $10,000. Mrs. Messick responds asserting that the lawyer’s letter was a “veiled threat” and was “frankly offensive”. She refutes the claim that the letter was “sent in confusion as they referenced the original offer amount of $500…” She closes requesting a formal recission of the lawyer’s letter. Mrs. Messick receives a response stating “You mentioned that RockHardTools is you and your husbands company name. Could you please let me know which industry your business operates in?” to which she replies “we are in the tractor/Farm industry.” No further correspondence is exchanged until Respondent received formal notice of the present Complaint on June 3, 2022. On June 7, 2022, Mrs. Messick’s attorney corresponds with Complainant’s counsel mentioning the prior negotiations and noting use of the Rock Hard Tools business name since 2010. Complainant’s counsel responds with a settlement offer of $6,000 representing the original $10,000 offer “less the fees incurred by filing the instant action after Ms. Messick terminated communications.”

Policy ¶ 4(b)(i) is provided as an example of bad faith registration and use where a respondent has “registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark….” The mere engagement in negotiations for a domain name transfer, alone, does not indicate bad faith under this sub-paragraph. There must be evidence that a respondent has targeted the complainant’s trademark with a bad faith intent of selling the domain name. Wirecard AG v. Telepathy Inc., Development Services, D2015-0703 (WIPO June 22, 2015) (where Complainant made an anonymous offer to purchase, the Panel found that “In the absence of any evidence from the Complainant that the Respondent had registered the disputed domain name with reference to the Complainant, the Respondent was fully entitled to respond to the unsolicited approach from the Complainant by asking whatever price it wanted for the disputed domain name….”); Warner Bros. Entertainment Inc. v. Karl Allberg, FA 1881913 (Forum Feb. 19, 2022) (no bad faith found where “the proof shows that Respondent did not initiate the contact. The contact was admittedly initiated by Claimant’s representative”) Here, Complainant asserts that “[r]ejecting a complainant’s offer to sell a domain name can be evidence of a finding of bad faith per Policy ¶ 4(b)(i).” The Panel assumes that Complainant meant to use the word “purchase” in this statement but notes the fact that Complainant’s agent initiated contact with Respondent on an anonymous basis and with no reference to the ROCKHARD trademark and without mention that it was acting on behalf of Complainant. Further, Respondent offers a plausible theory for breaking off purchase negotiations as it claims to have taken offense and lost trust in Complainant once it received a letter from its attorney asserting that it is “misappropriating the Rockhard Tools brand”. The mere fact that Respondent entertained the possibility of selling the disputed domain name to Complainant, particularly when viewed in the broader context of the circumstances surrounding this case, does not suffice as evidence that Respondent has acted in bad faith.

Next, Complainant asserts bad faith based on a claim of passive holding. This theory, which is independent of the examples provided in Policy ¶ 4(b), has been applied in situations where a domain name is not used but, rather, is held by a Respondent who may be lying in wait to sell it to the Complainant. On this topic, the WIPO Jurisprudential Overview 3.0 states, at par. 3.3, that “[w]hile panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Applying these elements to the present situation, the Panel finds that (i) Complainant has not submitted any evidence attesting to the distinctiveness or reputation of its mark (it submits only its trademark registration and a single screenshot of its own website’s home page); (ii) Respondent has submitted a Response and significant evidence in this case setting forth a good-faith use of the domain name to sell farm tractor components and accessories; (iii) while the Respondent has, in fact, concealed its identity in the public WHOIS record for its domain name, it has stated a plausible reason for doing so, as discussed later in this decision; and (iv) Respondent has plausibly claimed that it sells farm tractor components and accessories which are markedly different from the power tools offered by Complainant and that it plans to do so online using the disputed domain name in good faith. This last point poses a question of what is or is not trademark infringement or dilution and the Panel is of the opinion that such issues would be better decided in a venue other than a UDRP complaint – particularly as both parties appear to be subject to the jurisdiction of the United States of America. Considering all of the facts and circumstances presented here, the Panel cannot conclude, by a preponderance of the evidence, that Respondent has engaged in bad faith passive holding of the disputed domain name.

It is also asserted that Respondent’s use of a WHOIS privacy service when it registered the disputed domain name “raises a rebuttable presumption of bad faith.” Past decisions have considered the concealment of a respondent’s identity as a supporting factor in finding bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”) Respondent seeks to overcome this presumption by noting that “RH Tools, particularly as a sole proprietorship, has a legitimate interest in avoiding spam and keeping personal information private …. Indeed, Complainant sees this value as Complainant’s own website, rockhardtoolsinc.com, was registered using a privacy service and has its information redacted for privacy.” It further notes that “Respondent has actively negotiated with Complainant, attempted settlement, and is actively participating in the present UDRP action.” In the present case, the Panel does not consider Respondent’s use of a WHOIS privacy service to be an indicator of bad faith.

Finally, the Complaint asserts that that “it is difficult to envisage any use of the rockhardtools.com domain name that would not violate the Policy” and it argues that, “[t]he mere act of registration and use of the domain name rockhardtools.com constitutes bad faith pursuant to Policy ¶ 4(b)(iv)”. It goes on to claim that “it cannot be disputed that the Complainant has long standing and well recognized rights and goodwill in its ROCKHARD mark”. However, it submits no support for this in the form of evidence of the reputation of its mark or a viable theory for why Respondent would have registered the domain name with Complainant’s trademark in mind. To the contrary, Respondent has submitted significant evidence that it has operated a legitimate business using the Rock Hard Tools name for over ten years and asserts that it is in a line of business which is different from that engaged in by Complainant. In the present case the Panel finds no evidence that Respondent registered or used the disputed domain name to create confusion with or otherwise target Complainant’s mark under Policy ¶ 4(b)(iv).

Reverse Domain Name Hijacking

Respondent argues that Complainant has engaged in reverse domain name hijacking (RDNH), under Rule 15(e) of the Policy based on its delay in bringing the present case and its attempted use of the Policy to wrest control of the disputed domain name from Respondent after purchase negotiations had failed. Rule 15(e) provides:

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in the decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

RDNH has been found in a variety of circumstances, the most common being where a complainant knew that its case was doomed to failure or there was an ulterior purpose, namely, to increase negotiating leverage in settlement discussions. See Electrosoft Services, Inc. v. TechOps / SyncPoint, FA1969515 (Forum Dec. 9, 2021).

Respondent claims that, “[o]n July 11, 2014, four years after Respondent registered its Domain rockhardtools.com on July 22, 2010 … Complainant registered its domain rockhardtoolsinc.com” and that “[i]t is very unlikely that in the search for its own domain name Complainant did not encounter Respondent’s domain.” It then notes that Complainant “waited nearly eight full years to contact Mrs. Messick to inquire about the domain.” Though not specified as such by Respondent, the Panel interprets this as a claim of laches, i.e., respondent’s detrimental reliance upon a complainant’s delay in raising a dispute for an extended period of time. However, the theory of laches is generally disfavored under the Policy. Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value). As Respondent has not argued nor demonstrated that it relied on Complainant’s delay to its detriment, the Panel does not find RDNH based on this claim.

Of greater interest is Respondent’s assertion that Complainant, or its counsel, knew that its case was doomed to failure and brought the claim as part of a negotiating tactic. After purchase negotiations fell apart, Mrs. Messick sent an email to Complainant’s agent explaining that she has a tax ID and files tax returns under the name Rock Hard Tools, has done business under the name Rock Hard Tools for over ten years, and that she engages in the sale of tractor components in a separate channel of trade from Complainant. The only response was a further inquiry asking “which industry your business operates in?” The Complaint, which was filed subsequent to the abovementioned correspondence, asserts that Complainant “was unable to find a company registration for any variant of the ‘Rock hard tools’ name” and concludes, based on the “Coming Soon” message on Respondent’s website, that there is a “lack of an actual business”. It concludes that “Respondent has engaged in a pattern of opportunistic bad faith within the parameters of ICANN Policy ¶ 4(b)(iv).” This assertion is unclear to the Panel as it is Policy ¶ 4(b)(ii) which mentions a pattern of conduct although perhaps Complainant intended to imply that Respondent rescinded its sale at the $10,000 price in an effort at holding out for more money. In any case, these events were followed by the filing of the present Complaint and the Respondent’s submission of significant documentary evidence that it, in fact, operates a business under the name Rock Hard Tools. Complainant has not sought to file an additional statement addressing this evidence nor has it sought to withdraw or adjourn the case. As such, the Panel is left with the impression that Complainant has spent its money (on legal and filing fees) and is willing to simply take its chances on the outcome of the case.

While the above series of events does lead the Panel to suspect overreaching on the part of Complainant, the question remains of whether its trademark rights covering power tools may be successfully enforced against Respondent’s use of a similar name – and domain name – related to the sale of farm tractor components and accessories. This is an issue of trademark law which, although outside the scope of the Policy, provides Complainant with just a sliver of legitimacy and leaves the Panel unable to find that this case has been pursued in bad faith or primarily to harass Respondent. On this basis, the Panel finds that the scale tips ever so slightly against a finding of RDNH.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

Steven M. Levy, Esq., Panelist

Dated: July 8, 2022

[i] Complainant hedges its arguments by stating that “[e]ven if Respondent were operating a business known as ‘Rock hard tools’” and “even if Respondent was commonly known as ’Rock hard tools’ it “would not have rights or legitimate interests in the rockhardtools.com domain name” because it is using the mark in an unauthorized manner and is causing confusion. It cites the decisions in Seiko Epson Corporation and Epson America, Inc. v. Advantage S & G Inc. c/o John Foley, FA 1329762 (Forum July 22, 2010) and Intel Corporation v. The Pentium Group, D2009-

0273 (WIPO May 6, 2009). However, the Panel finds these cases inapposite to the present case as the Epson and Intel trademarks are rather famous whereas Complainant has submitted no evidence, beyond a screenshot of its website’s home page, that speaks to the reputation or notoriety of its ROCKHARD mark or Respondent’s pre-dispute knowledge thereof.

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Comments

One Response to “RockHardTools.com: UDPR states you don’t have to use the #domain to prove fair use”
  1. RaTHeaD says:

    heheheheh…. he said rock hard tool.

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