Doug Mockett & Company, Inc. v. Miguel Gila
Claim Number: FA0808001219431
Complainant is Doug Mockett & Company, Inc. (“Complainant”), represented by Sanford
Astor, of Lewis Brisbois Bisgaard & Smith LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dougmockett.com>, registered with Backslap Domains, Inc.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 7, 2008.
On August 15, 2008, Backslap Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <dougmockett.com> domain name is registered with Backslap Domains, Inc. and that Respondent is the current registrant of the name. Backslap Domains, Inc. has verified that Respondent is bound by the Backslap Domains, 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 August 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@dougmockett.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 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <dougmockett.com> domain name is confusingly similar to Complainant’s MOCKETT DOUG MOCKETT & COMPANY, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <dougmockett.com> domain name.
3. Respondent registered and used the <dougmockett.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of furniture components that markets its products under a variety of marks that incorporate variations of the personal name of Complainant’s founder, Douglas A.J. Mockett. Complainant filed a trademark application for the MOCKETT DOUG MOCKETT & COMPANY, INC. mark with the United States Patent and Trademark Office (“USPTO”) on December 20, 2007 (Serial No. 77/357,237). Complainant has used the MOCKETT DOUG MOCKETT & COMPANY, INC. mark continuously in commerce since at least 1998, and has used marks that incorporate the “Doug Mockett” name, including DOUG MOCKETT & CO., to market its products since at least 1984.
Respondent registered the <dougmockett.com> domain name on May 16, 2002. The disputed domain name resolves to a website that includes pop-up advertisements and links to Complainant’s competitors.
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 need not own a federal trademark registration to establish rights in a mark pursuant to Policy ¶ 4(a)(i). Rather, a complainant can establish common law rights in the mark pursuant to Policy ¶ 4(a)(i) through a showing of secondary meaning associated with the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
While Complainant does not currently hold registered
trademarks with the United States Patent and Trademark Office (“USPTO”) for the
MOCKETT DOUG MOCKETT & COMPANY, INC. mark, Complainant has pending
trademark applications before the USPTO for that and other marks that
incorporate the “Doug Mockett” name.
Complainant asserts that it has used the MOCKETT DOUG MOCKETT & COMPANY,
INC. continuously in commerce since at least 1998, and asserts that it has used
the DOUG MOCKETT & CO. mark, which the <dougmockett.com>
domain name even more closely resembles, since at least 1984. Complainant has also filed a trademark
application for the MOCKETT DOUG MOCKETT & COMPANY, INC. mark with the
USPTO. The Panel finds that Complainant
has established common law rights in the MOCKETT DOUG MOCKETT & COMPANY,
INC. mark for purposes of Policy ¶ 4(a)(i). See
BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of [KEPPEL BANK] in connection with its banking
business, it has acquired rights under the common law.”).
Complainant contends that
Respondent’s <dougmockett.com> domain name is confusingly similar to its MOCKETT
DOUG MOCKETT & COMPANY, INC. mark. The <dougmockett.com> domain name differs from Complainant’s mark in two ways: (1)
the most distinctive part of the mark, the name “Doug Mockett,” has been
retained, and all other parts of the mark have been removed; (2) the space
between the words has been removed; and (3) the generic top-level domain
(“gTLD”) “.com” has been added. The use
of the most distinctive part of a mark, such as the personal name of a
company’s founder, does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i),
nor does the removal of the space between words. The addition of a gTLD also does not reduce
the likelihood of confusion between the domain name and the mark, because every
domain name must contain a top-level domain.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain name is not sufficiently distinguished from Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001) (finding that the <westjets.com> domain name is confusingly
similar to the complainant’s mark, where the complainant holds the
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <dougmockett.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <dougmockett.com>
domain name nor has it ever been the owner or licensee of the MOCKETT DOUG
MOCKETT & COMPANY, INC. mark.
Respondent has been identified as “Miguel Gila,” and nothing in the
WHOIS record for the disputed domain name indicates that Respondent has ever
been known by any variation on the MOCKETT DOUG MOCKETT & COMPANY, INC.
mark. This evidence, along with the fact
that Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known by
<dougmockett.com> pursuant
to Policy ¶ 4(c)(ii). See 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"); see also Hartford Fire
Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000)
(finding that the respondent has no rights or legitimate interests in domain
names because it is not commonly known by the complainant’s marks and the
respondent has not used the domain names in connection with a bona fide
offering of goods and services or for a legitimate noncommercial or fair use).
Respondent maintains a commercial website at the <dougmockett.com> domain name that features pop-up advertisements and links to websites of Complainant’s competitors. Because Respondent is using a domain name that incorporates Complainant’s mark to advertise products unrelated to Complainant’s business, the Panel finds that this use of the <dougmockett.com> 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website at the <dougmockett.com> domain name, through the confusion caused by the similarity between the MOCKETT DOUG MOCKETT & COMPANY, INC. mark and the <dougmockett.com> domain name. Complainant also contends that Respondent intended this diversion to link Internet visitors to websites of Complainant’s competitors, and thereby to disrupt Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to link Internet visitors to websites of Complainant’s competitors disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See 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 Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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).
Complainant also contends that Respondent is gaining
commercially through this diversion, through click-through fees that the
third-party websites give to Respondent whenever Internet visitors click on the
hosted links and advertisements. The
Panel finds that this is an intentional use of the disputed domain name for
commercial gain through a likelihood of confusion with Complainant’s mark, and
so, pursuant to Policy ¶ 4(b)(iv), this use is also
evidence of registration and use in bad faith.
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 Policy ¶ 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 ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where the respondent linked the domain name to another
domain name, <iwin.com>, presumably receiving a portion of the
advertising revenue from the site by directing Internet traffic there, thus
using a domain name to attract Internet users for commercial gain).
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 <dougmockett.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: October 3, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum