Masonite International Corporation / Masonite Corporation v. Mayan Schwartz
Claim Number: FA2011001920183
Complainants are Masonite International Corporation and Masonite Corporation (collectively, the Complainants”), , represented by Joseph W. Berenato, III of Berenato & White, LLC, Maryland, USA. Respondent is Mayan Schwartz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masonite.store> (the “disputed domain name”), registered with DOTSERVE INC. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainants submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.
On November 12, 2020, the Registrar confirmed by e-mail to the Forum that the disputed domain name is registered with DOTSERVE INC. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the DOTSERVE 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 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@masonite.store. Also on November 16, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2020, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the disputed domain name be transferred from Respondent to Complainants.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Masonite International Corporation and Masonite Corporation. Masonite Corporation is the wholly-owned subsidiary of Masonite International Corporation and as such should be treated as a single entity.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: “[i]t has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.” Based on the foregoing, the Panel here finds that the two Complainants in this case may proceed as one party since they demonstrate a sufficient nexus to each other.
A. Complainants
Complainants are in the business of the manufacture, sale, and distribution of building products. Complainants have rights in the MASONITE trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 248,040, registered October 16, 1928). Complainants also collectively own registrations for the MASONITE trademark in at least 109 other jurisdictions (Complainants’ trademarks are hereinafter referred to collectively as the “MASONITE Mark”).
Complainants contend that Respondent’s disputed domain name is confusingly similar to Complainants’ MASONITE Mark since Respondent incorporates the MASONITE Mark in its entirety, simply adding the “.store” generic Top-Level domain (“gTLD”). Complainants further claim that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by <masonite.store>, nor did Complainants authorize Respondent to use the MASONITE Mark in any way. Moreover, Complainants contend that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to divert Internet users to a page containing third-party pay-per-click sponsored web pages unrelated to Complainants’ goods or services. Finally, Complainants state that Respondent registered and is using the disputed domain name in bad faith as Respondent attempts to create a likelihood of confusion with Complainants’ MASONITE Mark and uses hyperlinks to divert Internet users to Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainants have registered trademark rights in the MASONITE Mark, that the disputed domain name is confusingly similar to Complainants’ MASONITE Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 Complainants must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
As described above, the Panel finds that Complainants have rights in the MASONITE Mark through their registration of several trademarks with the USPTO (e.g., among others, Reg. No. 248,040, registered October 16, 1928). Registration of a trademark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
Here, Respondent’s disputed domain name is confusingly similar to the MASONITE Mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the MASONITE Mark in its entirety followed by the gTLD “.store“. The addition of a gTLD in a domain name may be technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (the mere addition of a generic Top-Level Domain does not serve to distinguish a domain name from a mark); see also Morgan Stanley v. NaSham, FA1611001703424 (Forum Dec. 14, 2016) (the addition of a gTLD such as “.store” to an otherwise recognizable mark may not distinguish the disputed domain name from that trademark under Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainants.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainants are required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainants have not authorized, licensed, or otherwise permitted Respondent to use the MASONITE Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainants.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a website containing pay-per-click sponsored links that compete with Complainants’ business.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainants.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent attracts users for commercial gain by displaying third-party pay-per-click sponsored links. Use of a confusingly similar domain name to display third party hyperlinks and collect click-through fees is evidence of bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Here, Complainants have provided screenshots of the resolving website of Respondent’s disputed domain name that displays hyperlinks to products related to or competitive with Complainants’ business.
Finally, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006). Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainants.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <masonite.store> disputed domain name be TRANSFERRED from Respondent to Complainants.
Lynda M. Braun, Panelist
Dated: December 14, 2020
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