Middle Atlantic Products, Inc. v. Domain Administrator c/o Whois IDentity Shield
Claim Number: FA0709001081303
Complainant is Middle Atlantic Products, Inc. (“Complainant”), represented by Amy
E. Carroll of Drinker Biddle & Reath LLP, 1500 K
Street, N.W., Suite 1100, Washington, DC, 20005. Respondent is Domain Administrator c/o Whois
IDentity Shield (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <middleatlanticproducts.com>, registered with Tuvaludomains.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 21, 2007; the National Arbitration Forum received a hard copy of the Complaint September 24, 2007.
On September 24, 2007, Tuvaludomains confirmed by e-mail to the National Arbitration Forum that the <middleatlanticproducts.com> domain name is registered with Tuvaludomains and that Respondent is the current registrant of the name. Tuvaludomains has verified that Respondent is bound by the Tuvaludomains registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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 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 November 1, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <middleatlanticproducts.com>, is confusingly similar to Complainant’s MA MIDDLE ATLANTIC PRODUCTS, INC. mark.
2. Respondent has no rights to or legitimate interests in the <middleatlanticproducts.com> domain name.
3. Respondent registered and used the <middleatlanticproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Middle Atlantic Products, Inc., is a company that provides products and services related to the custom design and engineering of racks. Complainant has been in business since at least 1979 and has spent millions of dollars in advertising its services and its mark. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the MA MIDDLE ATLANTIC PRODUCTS, INC. mark (Reg. No. 3,172,930 issued November 21, 2006). Additionally, Complainant operates a website at the <middleatlantic.com> domain name.
Respondent registered the <middleatlanticproducts.com> domain name July 15, 2007. Respondent’s disputed domain name resolves to a website that displays hyperlinks to a variety of third-party websites, some of which are in direct competition with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the MA MIDDLE ATLANTIC PRODUCTS, INC. mark under the requirements of Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant alleged that the <middleatlanticproducts.com> domain name is confusingly similar to Complainant’s MA MIDDLE ATLANTIC PRODUCTS, INC. mark. The disputed domain name contains the majority of Complainant’s mark, omitting only the letters “MA” from the beginning of the mark and the “INC.” from the end of the mark. Additionally, the disputed domain name adds the generic top-level domain “.com.” The Panel finds that none of these modifications distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also 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 Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case that Respondent lacks all rights and legitimate interests in the <middleatlanticproducts.com> domain name. The Panel finds that Complainant did so and that the burden now shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint permits the Panel to presume that Respondent has no rights or legitimate interests in the <middleatlanticproducts.com> 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). However, the Panel will examine all the evidence before it to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Nothing in the evidence before the Panel indicates that Respondent is commonly known by the <middleatlanticproducts.com> domain name. Moreover, Complainant states that Respondent is not authorized to use its mark in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <middleatlanticproducts.com> domain name to operate a website that displays hyperlinks to a variety of third-party websites, some of which offer goods and services that seek to compete with those offered by Complainant. The Panel presumes that such use is for Respondent’s own commercial benefit through the accrual of click-through fees, and thus the Panel finds that Respondent’s use of the disputed domain name 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds, as discussed above, that Respondent is operating the website that resolves from the <middleatlanticproducts.com> domain name for its own commercial benefit. Additionally, as the disputed domain name contains the dominant portion of Complainant’s mark, it is capable of causing a likelihood of confusion as to Complainant’s source, sponsorship, affiliation and endorsement of the <middleatlanticproducts.com> domain name and resulting website. Therefore, the Panel finds adequate evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Finally, as the <middleatlanticproducts.com> domain name resolves to a website that displays hyperlinks, some of which are in direct competition with Complainant, the Panel finds that the use of the disputed domain name constitutes a disruption of Complainant’s business and is further evidence of Respondent’s bad faith registration and use, this time under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant 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 <middleatlanticproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 15, 2007.
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