Menard, Inc. v. Domain Park Limited
Claim Number: FA0707001045120
Complainant is Menard, Inc. (“Complainant”), represented by Ernest
W. Grumbles, of Merchant & Gould P.C., 3200 IDS
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2007.
On July 25, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 August 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 2007 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, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com> domain names are confusingly similar to Complainant’s MENARDS mark.
2. Respondent does not have any rights or legitimate interests in the <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com> domain names.
3. Respondent registered and used the <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Menard, Inc.,
has provided home improvement and hardware products and services since 1970 in
Respondent registered the <menardas.com> domain name on April 15, 2007, the <menardsjob.com> domain name on May 7, 2007, the <menardds.com> domain name on June 29, 2007, and the <menerd.com> domain name on April 10, 2007. The websites located at the disputed domain names display hyperlinks to third-party websites through which Respondent generates click-through revenue.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
By registering its MENARDS mark with the USPTO, Complainant has met its burden under Policy ¶ 4(a)(i) of establishing its rights in the mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The Panel finds that Respondent’s <menardas.com>, <menardsjob.com>, <menardds.com>,
and <menerd.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb.
Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to
words, a respondent does not create a distinct mark but nevertheless renders
the domain name confusingly similar to the complainant’s marks). The <menardas.com>
and <menardds.com> domain names each add a letter to Complainant’s
mark, “a” and “d” respectively. See Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that <oicq.net> and <oicq.com> are confusingly similar to the
complainant’s mark, ICQ). The <menardsjob.com> domain name
fully incorporates Complainant’s mark, adding the generic term “job” to the
Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26,
2000) (finding that the domain name <bodyshopdigital.com> is confusingly
similar to the complainant’s THE BODY SHOP trademark). The <menerd.com>
domain name simply misspells Complainant’s mark by substituting an “e” for an
“a” and deleting “s.” See Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also State Farm Mut. Auto. Ins.
Co. v. Try Harder &
Complainant’s assertion that Respondent lacks rights and legitimate interests in the MENARDS mark sufficiently meets its burden under the Policy ¶ 4(a)(ii) requirement that Complainant establish a prima facie case as to its rights in the mark. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Because Respondent failed to submit a Response to this Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Although no further analysis is required, the Panel will examine the evidence to determine if Respondent holds any rights or legitimate interests under Policy ¶ 4(c).
Respondent is also unable to establish rights or legitimate interests under Policy ¶ 4(c)(ii) as nothing provided in the evidence, including the WHOIS record, leads the Panel to conclude that Respondent “Domain Park Limited” is commonly known by any of the disputed domain names. See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s use of the disputed domain names to generate click-through revenue by redirecting Internet users to third-party websites does not constitute a bona fide offering of goods or services as required by Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”)
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has not authorized Respondent to use its mark in connection with the disputed domain names. Respondent has used the disputed domain names to attract Internet users seeking Complainant’s services for its own commercial gain by redirecting Internet users to third-party websites and generating click-through revenue. Further, the disputed domain is capable of causing Internet users confusion as to Complainant’s affiliation with the disputed domain name. Under Policy ¶ 4(b)(iv), the Panel finds Respondent’s activities representative of bad faith use and registration. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menardas.com>, <menardsjob.com>, <menardds.com>, and <menerd.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 11, 2007
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