Menard, Inc. v. Onsite Computer LLC
Claim Number: FA0111000102164
Complainant is Menard, Inc., Eau Claire, WI (“Complainant”) represented by Stephen R. Baird, of Fish & Richardson P.C. Respondent is Onsite Computer LLC, Merrillville, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teammenards.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 12, 2001; the Forum received a hard copy of the Complaint on November 14, 2001.
On November 19, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <teammenards.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, 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.” 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 the Respondent to the Complainant.
The <teammenards.com> domain name is confusingly similar to Complainant’s MENARDS and TEAM MENARD marks.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant is in the retail building supply business. Since 1992, Complainant has sponsored the TEAM MENARD racing team, which participates in various high-profile Indy Racing League, Indy Northern Light Series, and NASCAR events.
Complainant owns multiple trademarks and service marks in TEAM MENARD and MENARDS. Complainant registered the TEAM MENARD mark on the Principal Register of United States Patent and Trademark Office in 1998 and has continuously used the mark in commerce since 1992. Complainant registered the MENARDS mark in 1997 and has continuously used the mark since 1981.
Complainant has sponsored at least one other racing team, Heritage Motorsports, which was also sponsored by Respondent at one time. While the Heritage Motorsports team’s car incorporated the MENARDS mark, it did not anywhere display the TEAM MENARD mark. In fact, the Heritage Motorsports team is a competitor of the TEAM MENARD racing team.
Respondent registered the disputed domain name on May 16, 2001. Through correspondence between the two parties’ attorneys, Respondent asserted that it registered the domain name for the purpose of hosting a site dedicated to the Heritage Motorsports racing team. According to the attorney, use of the domain name incorporating Complainant’s marks was therefore justified because Complainant was also a sponsor of the team. Respondent’s attorney later indicated that Respondent had not actually displayed any content at the disputed domain name, nor did it have any intention to do so in the future.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Although not identical, <teammenards.com> is confusingly similar to Complainant’s TEAM MENARD mark. The addition of the letter “s” to the mark does not defeat the confusing similarity, especially in light of Complainant’s ownership of the MENARDS mark, which incorporates the additional “s.” See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark”); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who view a web site hosted at the contested domain name).
Further, the addition of “.com” to Complainant’s marks does not affect the domain name’s confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Because Respondent failed to submit a Response to this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).
By declaring that it would hold, but not use, the domain name indefinitely, Respondent has demonstrated its intent not to make any use of the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor for a legitimate noncommercial purpose pursuant to ¶ 4(c)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).
Further, there is no evidence to suggest that Respondent is known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). Respondent may have once sponsored the Heritage Motorsports team at the same time as Complainant, but that team is not commonly known as TEAMMENARDS or TEAMMENARDS.COM. Moreover, even if Respondent had sponsored a team commonly known by Complainant’s mark, license to use the name would not be automatically granted to Respondent or to any of the team’s other sponsors. By way of team sponsorship, Respondent does not automatically impute all of the team’s rights onto its own organization. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Having found that Respondent holds no rights or legitimate interests in respect of the disputed domain name, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
In determining whether the disputed domain name was registered and used in bad faith, the Panel will look to the “totality of the circumstances.” See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).
Because of Respondent’s prior involvement in racing, it was aware or should have been aware of the proprietary nature of Complainant’s marks. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Respondent’s selection of a domain name confusingly similar to those marks, therefore, permits a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent’s intentional non-use of the disputed domain name further demonstrates bad faith under the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, although Complainant and Respondent are not direct commercial competitors, Respondent’s use of the domain name in light of the competitive nature of the respectively sponsored teams further supports a finding of bad faith under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as “one who acts in opposition to another,” while specifically noting that “the context [of the Policy] does not imply or demand any restricted meaning such as commercial or business competitor”). While Respondent has most recently asserted that it has no intention of using the domain name, its prior stated purpose was to host a site for a competing team, and this therefore evinces bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three of the required elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is ordered that the <teammenards.com> domain name be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 26, 2001
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