NATSAC, INC. d/b/a Meurice Garment Care v. David Kistner
Claim Number: FA0805001190108
Complainant is NATSAC, INC. d/b/a Meurice
Garment Care (“Complainant”),
represented by Sheldon R. Pontaoe, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <meuricegarmentcare.net> and <meuricegarmentcare.org>, registered with Godaddy.com, Inc. (“Godaddy”)
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 12, 2008; the Forum received a hard copy of the Complaint on May 13, 2008.
On May 13, 2008, Godaddy confirmed by e-mail to the Forum that the domain names <meuricegarmentcare.net> and <meuricegarmentcare.org> (“the disputed domain names”) were registered with it and that Respondent is the current registrant of the names. Godaddy has also verified that Respondent is bound by its 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 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 6, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on June 3, 2008.
A timely Additional Submission was received from Complainant and determined to be complete on June 9, 2008.
On June 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist and set a deadline of June 25, 2008 for a Decision. On June 27, 2008 an Order extending the time to July 2, 2008 was issued.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Identical or Confusingly Similar
Complainant contends as follows:
Rights or Legitimate Interests
Complainant contends that Respondent has no right to or legitimate interest in the
disputed domain names because:
In fact, the disputed domain names resolve to a website featuring Respondent’s own competitive dry-cleaning business which is called “Green Apple Cleaners” and Complainant provided a copy of an extract from the Green Apple website which describes Mr. Kistner’s creation of Green Apple Cleaners, and which bears his signature.
Thus, it is Complainant’s contention that Respondent is using the disputed domain names to mislead and divert Internet users searching for Complainant to a commercial website where Respondent offers dry-cleaning services in competition with Complainant. As Respondent’s site is in no way authorized by or related to Complainant, it is apparent to Complainant that Respondent is capitalizing on its well-known mark by attracting Internet users – including Complainant’s current and potential customers – to its own website in a blatant attempt to divert business away from Complainant and for its own commercial gain.
Complainant contends that its mark MEURICE GARMENT CARE is well-known in the New York Metropolitan area and beyond, as discussed above. Respondent, a direct competitor, also has locations in the New York Metropolitan area. Thus, it can be inferred that Respondent was aware of Complainant’s mark when it registered the disputed domain names and knew that such registration would disrupt Complainant’s business.
Based on the fame of Complainant’s mark, the fact that Respondent chose to register two domain names which fully incorporate its service mark, and the fact that Respondent is using them to divert Complainant’s customers and potential customers to Respondent company’s own website, it is clear to Complainant that Respondent had knowledge of Complainant’s mark and is attempting to take advantage of Complainant’s goodwill. This, Complainant contends, is evidence of bad faith.
Respondent is using the disputed domain names in an effort to capture business intended for Complainant, by promoting competing services to, for example, Complainant’s customers or potential customers who reach Respondent’s website by typing <meuricegarmentcare.net> or <meuricegarmentcare.org> into their Internet browser, expecting to reach the Complainant’s website. Complainant contends that this too is evidence of bad faith.
As final evidence of bad faith, Complainant contends that Respondent is disrupting Complainant’s business by diverting current and potential customers to a competitive business, thus causing Complainant to suffer loss of business and revenue.
Respondent contends that Complainant does not have legal rights to the service mark MEURICE GARMENT CARE as, according to a printout from the records of the USPTO, which was annexed to the Response, its registration of this mark has been cancelled and is listed as being DEAD.
Respondent claims that the disputed
domain names were acquired at the onset of a Google Ad Word campaign where uses
of common search term were chosen. Respondent conducted an exhaustive and
extensive search of descriptive words (including dry cleaning / drycleaning /
garment care / etc.) and dry cleaners operating in
Respondent cited, and annexed copies of, the cases of GIECO v. Google and Rescue.com v. Google as proof that the use of trademarks and service marks as used as search engine ad words and web site optimizations clearly demonstrate that so long as the mark (which it reiterates was dead as of November 2007) is not in the Headline or Main body of the advertisement or results, then it was deemed not to be an infringement of the mark). A secondary conclusion that can be drawn from these decisions is that the Complainant never opted out of allowing companies to use “meurice garment care” as a Google Ad Word.
A further annex to the Response shows the “Name Registration Suggestions” from Godaddy in which this firm specifically suggests that one should register additional names beyond the .com level to ensure that “your competition does not get it” – even though Respondent contends that it does not compete with Complainant.
Respondent also annexed a copy of a search report which showed that, when entered into a search engine, the names <meuricegarmentcare.net> and <meuricegarmentcare.org> only return pages relating to this dispute. Respondent therefore contends that his is legitimate non-commercial and fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
Respondent contends that it has not received any gain by possessing the disputed
domains, and asks why Complainant has yet to register <meuricegarmentcare.tv/.info/.mobi/.biz/.us/.name> or remove the name from Google Ad words which, it asserts, is the number one ad search engine.
C. Additional Submission
In its Additional Submission,
Complainant notes that Respondent does not deny that the disputed domain names
are identical to Complainant’s service mark MEURICE GARMENT CARE. However
Respondent is incorrect when he contends that Complainant “does not have legal rights” to this service mark because, although
Complainant did have a
Complainant notes that the case law cited by Respondent relates to key word advertising, and at no point does he cite any case law applicable to domain names, so it therefore contends that these cases are entirely irrelevant.
With regard to GoDaddy’s suggestions cited by Respondent, Complainant asserts that in the first place a Registrar such as GoDaddy would naturally encourage the purchase of multiple variations of a domain name as a Registrar’s objective is to gain revenue from domain name registrations and, secondly, one could easily interpret such encouragement as relating to the purchase of multiple domain names in connection with promoting one’s own business – not that of a competitor.
Complainant contends that even though, when the disputed domain names are entered into a search engine, the only results are pages from the Forum’s website relating to the present dispute, this does not constitute fair use. Examples of “fair use” under the Policy generally include noncommercial use of another’s mark, such as free speech, criticism, commentary, parody, or fan club support. Here, Respondent’s use of the disputed domain names to redirect Internet users to a competing business clearly does not qualify as any of the above mentioned types of expression.
Complainant contends that Respondent’s use of the disputed domain names is the epitome of misleadingly diverting consumers. When an Internet user types either of the disputed domain names into a web browser, instead of reaching information about Complainant, the user is diverted through Respondent’s purposeful redirection to Respondent’s website. As Respondent operates a dry cleaning business in the same metropolitan area as Complainant, Respondent’s services clearly compete with those of Complainant. Thus, it is entirely inapposite to claim that consumers are not being diverted away from Complainant.
Respondent also makes the bare assertion that he has not received any gain through his use of the disputed domain names. However Complainant notes that this statement is unsupported and also highly unlikely, as Respondent presumably sought to divert customers and potential customers of Complainant to Respondent’s own website by registering and using the confusingly similar Domain Names, thereby placing Respondent in a position to acquire business he might not have obtained otherwise.
Complainant is a provider of premium dry cleaning services, specializing in high-end garments and household items. It has three locations in the New York Metropolitan area. For more than fifty years, Complainant has served a wide range of clients, from a former first lady to major fashion houses and fashion icons, although not always under the name of MEURICE GARMENT CARE. This name first came into use in 1991. Additionally, Complainant is a member of “Leading Cleaners Internationale,” a consortium of specialty drycleaners formed to promote excellence in services for haute-couture garments and other specialty items.
Respondent is one of the founders, in 2002,
of Green Apple Cleaners, a dry-cleaning establishment with two stores in
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 names registered by the Respondent are 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 names; and
(3) the domain names has been registered and is being used in bad faith.
Complainant has asserted that it has common law rights in the name MEURICE GARMENT CARE and there is nothing in the Policy to say that a Complainant must have a registered trademark in order to prove a Complaint. As can be seen from the above, the Policy refers only to “rights” and it is well established that these can be common law or other rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000) in which it was found that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist, while in British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000) it was said that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and that the Policy applied equally to “unregistered trademarks and service marks.”
According to the “WIPO Overview of Panel views on Selected UDRP Questions” the consensus view in UDRP Decisions is that the relevant evidence that a mark has achieved a secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
In this case Complainant has provided copies of extracts from its own website, as well as the sites of others in which its business is referred to. There are also copies of press reports in which it is mentioned and a printout of an impressive Google search for the term ‘Meurice Garment Care’ in which the only hits – 124 of them – relate to Complainant. Complainant also refers to the fact that it is a member of “Leading Cleaners Internationale,” which promotes excellence in services for garments and other specialty items, and that it was recognized in Martha Stewart Living magazine as being “one of New York’s best dry cleaners.” According to Complainant, the MEURICE GARMENT CARE mark “has become a trusted and respected name in the fashion world.”
states, but without any proof, that its business was started more than 50 years
ago by the father of the present owner, and that the name MEURICE GARMENT CARE
has been used by it since 1991. This latter date is confirmed in the copy of a
cancelled US Federal trademark registration No. 2429685 which was put in
evidence by Respondent. It claims to operate 3 stores under the name MEURICE
GARMENT CARE in the
The Panel has not been provided with any sales figures, or figures for any amounts spent on publicity, but all in all the evidence is, in the opinion of the Panel, sufficient to show that Complainant has rights in the name MEURICE GARMENT CARE.
The Panel further finds that this name is identical to both of the
disputed domain names for it is well established that, for the purpose of a
comparison under paragraph 4(a)(i) of the Policy, any gTLDs can be ignored. See Bond & Co. Jewelers, Inc. v.
It is well established that if a Complainant has made out a prima facie case that a Respondent has no rights and legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show it does have such rights or legitimate interests. It was held, for example, in Hanna-Barbera Products, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Also, in AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) it was said that “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”
The Panel finds that, in this case, Complainant has made out a very strong prima facie case and it therefore up to Respondent to disprove it. He has not.
There is no evidence in the record or in the WHOIS registration information that Respondent is commonly known by the disputed domain names and it was found in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) that the respondent does not have rights in a domain name when he is not known by the mark. It was also held in RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) that for a respondent to prevail, he must show that he has been commonly known by the domain name prior to registration of the domain name.
Respondent is a Mr. David Kistner. Complainant has filed evidence that he is in fact the founder and leading light behind another dry cleaning business called Green Apple Cleaners. Whilst this is, probably, a perfectly bona fide business, in the opinion of the Panel Respondent is not making a bona fide offering of goods or services under either of the disputed domain names. He is therefore not making a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy, and it was held in Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) that “Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” It was also held in Am. Online, Inc. v. Advanced Membership Services, Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) that “Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).” Furthermore, in Computerized Security Systems, Inc. v. Hu, FA 0157321 (Nat. Arb. Forum June 23, 2003) it was found that “[t]he Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell goods in direct competition with Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).” Indeed, in Ciccone v. Parisi, WIPO Case No. D2000-0847 (Oct. 16, 2000) it was said that “use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
Respondent is a direct competitor of Complainant and he uses the disputed domain names to direct Internet users to a website in direct competition with Complainant. As far as the Panel can see, he has absolutely no claim whatsoever to the name “Meurice Garment Care.” It is not as if ‘Meurice’ is a common term. It an unusual surname. Respondent claims to have hit upon the name by chance which seems utterly improbable. He also asserts that the disputed domain names, when entered into a search engine such as Google, only return results showing the dispute pages of the National Arbitration Forum. Far from this proving a legitimate noncommercial or fair use of the disputed domain name, in the Panel’s view it is completely irrelevant.
Consequently, the Panel has no hesitation in finding that Respondent has no rights or legitimate interests in either of the disputed domain names.
It is difficult to imagine a worse case of bad faith than this. Respondent – a competitor of Complainant in the dry cleaning business and in the same city area – registered two domain name that are identical to a name under which Complainant has traded for over 15 years.
The panel in Bank of Am. Corp. v. Out Island Props., Inc. FA 154531 (Nat. Arb. Forum June 3, 2003) in finding bad faith, stated that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.” Also, in Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) it was said that “[r]espondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).” In addition, it was found in Classic Metal Roofs, LLC v. Interlock Industries, Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to paragraph 4(b)(iii) of the Policy by redirecting Internet users to the respondent’s competing website); while in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) it was said “[r]espondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”
Respondent says that he found and
registered the disputed domain names by running a Google search for “dry-cleaning,
garment care and dry cleaners in
The Panel agrees with Complainant that Respondent’s reference to two cases in which Google was the defendant are not relevant to the present case. Neither is it pertinent whether or not Complainant opted out of allowing the use of its MEURICE GARMENT CARE mark in Google’s Ad Word campaign.
Godaddy’s “Name Registration Suggestions” are a clear attempt by that Registrar to persuade its clients to spend more money registering superfluous domain names, and the document in this regard supplied by Respondent has no relevance in the present case.
The Panel therefore finds that both of the disputed domain names were registered and have been used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <meuricegarmentcare.net> and <meuricegarmentcare.org> domain names be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: June 28, 2008
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