MasterCraft Boat Company, LLC v. Natasha Luzkova
Claim Number: FA2112001977363
Complainant is MasterCraft Boat Company, LLC (“Complainant”), represented by Egerton, McAfee, Armistead, & Davis, P.C., Tennessee, USA. Respondent is Natasha Luzkova (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mastercraft-boats.com>, registered with URL Solutions, Inc..
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.
Complainant submitted a Complaint to the Forum electronically on December 16, 2021; the Forum received payment on December 16, 2021.
On December 21, 2021, URL Solutions, Inc. confirmed by e-mail to the Forum that the <mastercraft-boats.com> domain name is registered with URL Solutions, Inc. and that Respondent is the current registrant of the name. URL Solutions, Inc. has verified that Respondent is bound by the URL Solutions, 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 December 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 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@mastercraft-boats.com. Also on December 22, 2021, 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 January 17, 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Mastercraft Boat Company LLC, is a Tennessee-based United States business that manufactures and internationally markets inboard boats for towed watersports and other recreational uses, as well as related products and accessories. Through its predecessor, Complainant claims rights to the trademark MASTERCRAFT based on use in commerce dating back to 1971 as well as on registration with the United States Patent and Trademark Office (“USPTO”) as early as 1994. The disputed <mastercraft-boats.com> domain name is confusingly similar to Complainant’s registered mark, differing only by the addition of a hyphen and the generic word “boats” which relates to Complainant’s business in a way that only increases the likelihood of confusion. The “.com” generic top level domain (“gTLD”) is also added.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its mark, nor is Respondent commonly known by the disputed domain name. Furthermore, Respondent populates the disputed domain name’s website with content copied from Complainant’s website to give it the appearance of legitimacy.
Respondent’s usage and registration were done in bad faith. Respondent is not licensed to use the mark, and its use diverts customers away from Complainant, causing confusion for commercial gain and disrupting Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) Complainant has demonstrated ownership of rights to the trademark MASTERCRAFT through its USPTO registrations and the disputed domain name is confusingly similar thereto:
(2) Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and there is no evidence to rebut this; and
(3) Bad faith registration and use of the disputed domain name has been supported by a preponderance of the available evidence showing use of the disputed domain name for a website that passes itself off as originating with Complainant by copying the MASTERCRAFT logo as well as certain graphic elements of Complainant’s own website.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence 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 and supported 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”).
The <mastercraft-boats.com> domain name is identical or confusingly similar to Complainant’s MASTERCRAFT mark because it wholly incorporates Complainant’s mark, differing only through the addition of the generic term “boats” and by the usage of the “.com” gTLD. Previous Panels have held that the addition of a gTLD does nothing to differentiate a disputed domain name from the mark under Policy ¶ 4(a)(i). See Tumblr, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, D2013-0213 (WIPO Mar. 29, 2013) (“the use of the generic top level (gTLD) ‘.com’ in a disputed domain name does not affect a finding of similarity.”) The addition of the “.com” gTLD therefore does nothing to assuage concerns of confusion in the present situation. Furthermore, the addition of a hyphen and the generic term “boats” does nothing to differentiate the disputed domain name from the Mark. See Wahl Clipper Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1924537 (Forum Jan. 11, 2021) (stating that generic terms do “not add any distinctive character to the disputed domain name”). To the contrary, this word only serves to create greater confusion for consumers through an obvious relation to Complainant’s business. Fenix International Limited c/o Walters Law Group v. Prc Maru, D2021-3255 (WIPO Dec. 15, 2021) (“Finally, the use of the word ‘premium’ in the disputed [onlyfanspremium.site] domain name coupled with the Complainant’s trademark enhances not reduces confusion.”) Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 argues that Respondent lacks rights or legitimate interest in the <mastercraft-boats.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MASTERCRAFT mark or register domain names using Complainant’s mark. In considering this issue, WHOIS information may be reviewed to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information bore no resemblance to the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The privacy-shielded WHOIS record for the <mastercraft-boats.com> domain name, as revealed by the concerned Registrar after the Complaint was filed, identifies Respondent as Natasha Luzkova. There is no evidence that Respondent is known otherwise or that it has any rights to the word “Mastercraft”. Complainant specifically notes that it “has not authorized Respondent’s use of its trademarks in connection with the disputed domain name” and Respondent has not filed a Response in this case or made any other submission to the contrary. Therefore, the Panel finds no evidence that Respondent is commonly known by the disputed domain name or that it has been granted any rights relevant thereto per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <mastercraft-boats.com> domain name to pass itself off as Complainant. Use of a disputed domain name in an attempt to pass oneself off as a complainant is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Nokia Corporation v. John Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the Respondent’s use of the disputed domain name to pass itself off as the Complainant in order to advertise and sell unauthorized products of the Complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant submits screenshots of Respondent’s <mastercraft-boats.com> website, the contents of which it claims “appear to be copies of the information and content presented on MasterCraft’s legitimate website (which further constitutes a violation of Complainant’s trademark, copyright, and various other intellectual property rights).” Screenshots from Complainant’s own website at www.mastercraft.com are also provided. The Panel notes that Respondent’s website displays the MASTERCRAFT logo, makes other uses of the word mark, and includes a number of photographs of boats bearing the mark as well as others depicting people engaged in various water sports. The Panel is not able to discern any specific photographs or text that are copied therefrom other than the said logo and menus of links appearing at the top and bottom of Respondent’s site. Nevertheless, the evidence does clearly show that the <mastercraft-boats.com> page has the look and feel of Complainant’s own site and gives the appearance of being a page that originates from Complainant. Such passing off is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(i) or (iii).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its MASTERCRAFT mark at the time it registered the <mastercraft-boats.com> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) As noted, Complainant submits screenshots from its own www.mastercraft.com website which shows some promotional activity surrounding the mark. It also submits an affidavit of its Chief Revenue Officer who states that the MASTERCRAFT mark “has been in continuous [sic] by Complainant, or its predecessors ίn interest” since 1971, that in its fiscal year 2021 Complainant has “spent ίn excess of $4,000,000.00 ίn advertising, marketing, sponsorships and other activities promoting the goods and services offered under its various MASTERCRAFT Marks,” and cumulatively during its fiscal years 2011 through 2021 it has “has spent ίn excess of $55,000,000.00 ίn advertising, marketing, sponsorships and other activities promoting the goods and services”. The affidavit also includes a chronological list titled “MasterCraft Timeline: Innovations, Accomplishments & Awards”. The Panel accepts this as evidence that Complainant’s mark has been significantly promoted over many years. In any event, Respondent’s actual knowledge of Complainant’s mark is apparent from its website which copies the MASTERCRAFT logo and makes extensive use of images depicting boats that bear the mark as well as of people engaged in various water sports.
Complainant does assert that Respondent registered and uses the disputed domain name in bad faith by “attempting to attract, for commercial gain, Internet users to its web site or other online location by creating a likelihood of confusion with Complainant’s MASTERCRAFT marks” under ¶ 4(b)(iv). Panels have held that an attempt to create confusion for commercial gain has generally been found to have been evidence of bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
As noted above, Respondent creates confusion and passes itself off as Complainant by using the MASTERCRAFT logo, several photographs on its <mastercraft-boats.com> website that are associated with Complainant’s products, and by copying certain graphic elements and the look and feel of Complainant’s own www.mastercraft.com website. Complainant further asserts that users “are potentially prey to scammers or malware since the security for Respondent’s website is suspect” although it does not provide any further analysis or evidence on this point. However, as Respondent has not participated in these proceedings, it has not sought to rebut Complainant’s assertions this case. Further, the Panel does note the appearance, on Respondent’s website, of links titled “Design Your Boat” and “Get Price List” which suggest an intention to seek commercial gain from the use of the site.
Complainant also argues that Respondent uses the <mastercraft-boats.com> domain name disrupts its business. Using an infringing domain name to pass oneself off as a trademark holder may demonstrate bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant asserts that Respondent’s use of the disputed domain name “serves to disrupt the legitimate business of Complainant in that: (i) the domain name is not available for use by Complainant; and (ii) customers or potential customers for Complainant’s MasterCraft-branded goods & services are diverted to Respondent’s web site, which is not a legitimate source for such goods & services.”
After considering all of the arguments and documents presented here, upon a preponderance of the evidence the Panel finds that Respondent’s registration and use of the disputed domain name were done in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mastercraft-boats.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 18, 2022
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