Massarelli's Lawn Ornaments, Inc. v. SL Pace
Claim Number: FA0809001226149
Complainant is Massarelli's
Lawn Ornaments, Inc. (“Complainant”), represented by Barry F. Irwin, of Kirkland & Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <massarellis.com>, registered with Dotster.
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 September 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2008.
On September 24, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <massarellis.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 October 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 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 <massarellis.com> domain name is identical to Complainant’s MASSARELLI’S mark.
2. Respondent does not have any rights or legitimate interests in the <massarellis.com> domain name.
3. Respondent registered and used the <massarellis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the MASSARELLI’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,420,439 issued January 16, 2001) for concrete statuary objects. Complainant has used this mark to market and sell a variety of fountains, birdbaths, statuary and other decorative items for gardens.
The <massarellis.com> domain name was registered on April 29, 2007 and currently resolves to website displaying a series of links entitled “Garden Fountains,” “Garden Decor,” “Birdbaths,” and “Statuary.” These links redirect Internet users to third-parties who offer products that are in direct competition with Complainant.
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 concludes that Complainant’s registration of the MASSARELLI’S mark with the USPTO sufficiently establishes Complainant’s rights in that mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
The <massarellis.com> domain name incorporates Complainant’s MASSARELLI’S mark omitting only the apostrophe before the last letter “s.” However, since punctuation cannot be reflected in domain name, the Panel considers this to be insignificant. Moreover, the inclusion of the generic top-level domain (“gTLD”) “.com” is not relevant to an analysis under Policy ¶ 4(a)(i) because all domain names require a top-level domain. Accordingly, the Panel finds the <massarellis.com> domain name to be identical to Complainant’s MASSARELLI’S mark pursuant to Policy ¶ 4(a)(i). 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 Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first establish a prima facie case against Respondent, demonstrating that it lacks rights and legitimate interests in the disputed domain name. The Panel finds that Respondent has met this threshold and that accordingly the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
No reply has been filed in this case. Therefore, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. Nonetheless, the Panel will evaluate the record in consideration of the elements listed under Policy ¶ 4(c). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant asserts that “Respondent is not and has not been authorized to use [the] MASSARELLI’S marks [sic].” Additionally, the WHOIS information does not in any way suggest or otherwise support an inference that Respondent is or ever was commonly known by the disputed domain name. The WHOIS contact information identifies Respondent as “SL Pace.” Without any further information in the record, the Panel concludes that Respondent is not commonly known by the <massarellis.com> domain name pursuant to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <massarellis.com> domain name resolve to a website displaying a series of links to competitors of Complainant. Complainant argues that the Panel should presume that this use is earning Respondent “click-through fees.” The Panel agrees and finds that this competitive commercial use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial of fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <massarellis.com> domain name is currently
being use to resolve to a links page.
These links are labeled with titles for products substantially similar
to those offered under Complainant’s MASSARELLI’S mark. When one of these links is clicked-upon, an
Internet user is redirected to a third-party website of a direct competitor of
Complainant. The Panel considers this
use to be indicative of Respondent’s intent to disrupt Complainant’s
business. Consequently, the Panel finds
this use to establish that Respondent registered and is using the <massarellis.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Moreover, the <massarellis.com> domain name
presumably financially benefits Respondent through the accrual of
“click-through” fees or some other type of referral fee. This in conjunction with the fact that the
disputed domain name is identical to Complainant’s mark, creates the impression
that Respondent is commercially benefiting from the confusion of Internet users
seeking Complainant and Complainant’s products.
The Panel determines that this is additional evidence of Respondent’s
bad faith registration and use of the <massarellis.com> domain
name pursuant to Policy ¶ 4(b)(iv). See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <massarellis.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 10, 2008
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