Menard, Inc. d/b/a Menards v. James
Soldat
Claim Number: FA0206000114520
PARTIES
Complainant
is Menard, Inc., d/b/a Menards, Eau Claire, WI (“Complainant”) represented by Stephen R. Baird, of Fish & Richardson P.C. Respondent is James Soldat, Chicago, IL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <menardsstores.com>,
registered with Network Solutions.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 7, 2002; the Forum received a hard copy of the Complaint
on June 10, 2002.
On
June 10, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <menardsstores.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
June 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 1,
2002 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 postmaster@menardsstores.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
July 10, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <menardsstores.com>
domain name is confusingly similar to Complainant’s registered MENARDS mark.
2. Respondent does not have any rights or
legitimate interests in the <menardsstores.com> domain name.
3. Respondent registered and used the <menardsstores.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns nine registered
trademarks and service marks listed on the Principal Register of the U.S.
Patent and Trademark Office (“USPTO”), specifically, Reg. No. 2,191,048
registered on September 22, 1998 and Reg. No. 2,195,879 registered on October
13, 1998.
Complainant has operated under its
MENARDS mark for more than twenty years throughout the Midwest. According to
<forbes.com>, Complainant is the twenty-fifth largest privately held
company in the U.S. and the third largest retail home improvement store chain
in the U.S. Complainant currently operates over 160 retail stores in states throughout
the Midwest, including Respondent’s domicile, Illinois. Complainant also
operates from its <menards.com> registered domain name.
Respondent registered <menardsstores.com>
on January 3, 2000. Complainant’s investigation has revealed that Respondent
has never actively used the disputed domain name in conjunction with a
developed website or stated purpose. Complainant’s communications with
Respondent provide evidence that Respondent alleges he derived the <menardsstores.com>
domain name from a combination of the word “stores” and a representation of
the following acronym: MEN, Active, Responsive, Designer and Styles (MENARDS).
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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.
Complainant has established rights in the
MENARDS mark through registration with the USPTO and subsequent continuous use.
Respondent’s <menardsstores.com>
domain name is confusingly similar to Complainant’s MENARDS mark. Respondent’s
infringing domain name wholly incorporates Complainant’s MENARDS mark while
adding the generic term “stores.” The addition of a generic, albeit
industry-related, term does not detract from the dominating presence of
Complainant’s MENARDS mark. Furthermore, the addition of a generic term that
describes services associated with Complainant’s mark is likely to cause
confusion among Internet users and Complainant’s potential customers. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s mark
with a generic term that has an obvious relationship to the Complainant’s
business).
Accordingly, the Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate interests in the <menardsstores.com> domain
name. See Canadian Imperial Bank
of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23,
2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. See 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”).
Respondent has passively held <menardsstores.com>
since January 3, 2000 without demonstrating a purpose or developing a website
in conjunction with the domain name. Nearly two and a half years represents a
sufficient amount of time for Respondent to provide evidence of demonstrable
preparations to use the domain name. Respondent’s passive holding of the domain
name does not represent a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial use of the domain name
under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) (finding that prior to any notice of the dispute, the Respondent had
not used the domain names in connection with any type of bona fide offering of
goods and services).
There
is no evidence that suggests Respondent is commonly known by the <menardsstores.com>
domain name notwithstanding Respondent’s alleged acronym as stated in the
Findings. There is no apparent connection between Respondent and the MENARDS
mark, and Respondent has failed to produce evidence suggesting otherwise.
Because Complainant’s MENARDS mark is well-known and established in the
Midwest, including Respondent’s domicile, there is a presumption that
Respondent does not have rights or legitimate interests in a domain name that
incorporates Complainant’s famous MENARDS mark in its entirety. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also 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); see also Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the
Policy does not represent an exhaustive list of bad faith evidence. The Panel
must take into consideration the totality of circumstances in order to
determine if Respondent registered or used the domain name in bad faith. See
Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith evidence).
Complainant owns various registrations on
the Principal Register of the USPTO and has a presence in Respondent’s state,
Illinois. Hence, Respondent had constructive notice of Complainant’s rights in
its MENARDS mark prior to registering the disputed domain name. Knowledge of a
Complainant’s trademark rights prior to registering the domain name indicates bad
faith registration under Policy ¶ 4(a)(iii). See Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Respondent’s
passive holding of the disputed domain name allows an inference that the domain
name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii). See
DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Mondich &
Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that the Respondent’s failure to develop its website in a two year
period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the <menardsstores.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 24, 2002.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page