MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager
Claim Number: FA0807001218043
Complainant is MacKenzie-Childs Aurora LLC (“Complainant”), represented by Kristin
M. Walsh, of Nixon Peabody LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <mackenziechilds.com>, registered with Rebel.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2008.
On July 30, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <mackenziechilds.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 26, 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@mackenziechilds.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <mackenziechilds.com> domain name is confusingly similar to Complainant’s MACKENZIE-CHILDS, LTD. AURORA, NEW YORK MC 1983 mark.
2. Respondent does not have any rights or legitimate interests in the <mackenziechilds.com> domain name.
3. Respondent registered and used the <mackenziechilds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MacKenzie-Childs Aurora LLC, manufactures and markets ceramic or enamel dinnerware and tableware, glassware, furniture and other gifts. For over ten years, Complainant and its predecessor in interest have been using the MACKENZIE-CHILDS design marks to identify its goods and services. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MACKENZIE-CHILDS, LTD. AURORA, NEW YORK MC 1983 mark (Reg. No. 2,195,282 issued Oct. 13, 1998).
Respondent registered the <mackenziechilds.com> domain name on May 26, 2004. Respondent’s disputed domain name resolves to a website featuring links to other various competing commercial websites.
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.
Complainant has established rights in the MACKENZIE-CHILDS,
LTD. AURORA, NEW YORK MC 1983 mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. 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.”).
Respondent’s <mackenziechilds.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains the dominant portion of Complainant’s MACKENZIE-CHILDS, LTD. AURORA, NEW YORK MC 1983 mark, omits the hyphen separating the terms as well as the abbreviation for the term “Limited,” the city and state in which Complainant operates, and the year Complainant began operation. Moreover, Respondent’s domain name adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these differences are not distinctive under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also 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 Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <mackenziechilds.com> domain name. Panels have long held that in certain circumstances, allegations of Respondent’s lack of rights or legitimate interests in a disputed domain name amounts to a prima facie case under Policy ¶ 4(a)(ii). In the matter at hand, the Panel finds that Complainant has established a prima facie case under the Policy, shifting the burden from Complainant to Respondent. 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 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).
Complainant contends that Respondent is using the <mackenziechilds.com> domain name to operate a website containing links to several competing commercial websites. The Panel infers from its use of the disputed domain name that Respondent is collecting click-through fees for each misdirected Internet user that connects to a competing website. The Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”).
Moreover, Complainant contends that Respondent is not commonly known by the <mackenziechilds.com> domain name or owns a trademark in the disputed domain name or a term featured in the disputed domain name. Respondent’s failure to respond to Complainant’s assertions leaves the Panel with no evidence to the contrary. As a result, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration
and Use in Bad Faith
Respondent is using the <mackenziechilds.com>
domain name in bad faith. Respondent’s
domain name resolves to a website featuring links to various competing
commercial websites from which Respondent presumably receives referral
fees. The Panel finds such use to be
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to UDRP ¶¶ 4(b)(iii) [and] (iv).”).
Finally,
Respondent’s use is likely to cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the <mackenziechilds.com>
domain name and resulting website.
Respondent is capitalizing on this confusion by collecting click-through
fees for each Internet user misdirected to a competing financial services
website. Respondent’s use is further
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to UDRP ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website).
The
Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mackenziechilds.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 12, 2008
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