Macado's Inc. v. C. B. Henderson
Claim Number: FA0804001180994
Complainant is Macado's Inc. (“Complainant”), Virginia,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <macados.com>, registered with Network 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2008.
On April 24, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <macados.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 May
5, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 2008
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@macados.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <macados.com> domain name is identical to Complainant’s MACADO’S mark.
2. Respondent does not have any rights or legitimate interests in the <macados.com> domain name.
3. Respondent registered and used the <macados.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Macado’s Inc., is a
Respondent was a former employee of Complainant. Respondent’s <macados.com> domain name was knowingly transferred from Complainant to Respondent in order to give Respondent better “website management” capabilities during his employment. After Respondent was terminated from employment, he refused to transfer the disputed domain name back to Complainant. The disputed domain name still resolves to Complainant’s website featuring restaurant locations, menus, special events, and allows customers to leave feedback about the restaurant. The disputed domain name was re-registered on October 10, 2007.
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.
The Panel finds that Complainant has established sufficient rights in its MACADO’S mark through Complainant’s registration with the USPTO under Policy ¶ 4(a)(i). See 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.”); see also 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.”).
Complainant alleges that Respondent’s <macados.com> domain name is identical to Complainant’s MACADO’S mark. Respondent’s disputed domain name contains Complainant’s mark in its entirety, omits the apostrophe, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omition of punctuation marks such as an apostrophe, and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from a mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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). Therefore, pursuant to Policy ¶ 4(a)(i), Respondent’s disputed domain name is identical to Complainant’s mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant shifts the burden of proof to Respondent by initially establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent’s failure to respond furthers the presumption that Respondent lacks rights and legitimate interests in <macados.com> domain name. The Panel finds that Complainant has established a prima facie case, but nevertheless chooses to analyze the evidence under Policy ¶ 4(c). 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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); 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).”).
Complainant alleges that Respondent lacks all rights and
legitimate interests in the <macados.com> domain name due to his
termination of employment by Complainant.
Respondent’s WHOIS information identifies Respondent as “
Respondent is a former employee of Complainant and no longer is associated with Complainant. Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent is an unassociated former employee of Complainant and is making no use of the disputed domain name. The Panel finds that this type of situation is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nasaco Elecs. Pte Ltd. v. A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where the respondent’s former employee registered the domain name and transferred it to the respondent, who has since made no use of the domain name); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and used the <macados.com> domain name in bad faith because Respondent
misrepresented information about the transfer of the disputed domain name from
Complainant to Respondent for management purposes. However, the disputed domain name was registered
by Respondent when he was an employee and Respondent had written authorization
from Complainant to transfer the disputed domain name into his name for
management purposes. Therefore, the
Panel finds that the disputed domain name was not registered in bad faith pursuant
to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <macados.com> domain name REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 17, 2008
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