McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager
Claim Number: FA0810001230837
Complainant is McLaughlin Gormley King Company (“Complainant”), represented by Bradley
J. Walz, of Winthrop & Weinstine,
P.A.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <mgk.info>, 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 October 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2008.
On October 27, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <mgk.info> 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 October 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 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@mgk.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 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 <mgk.info> domain name is identical to Complainant’s MGK mark.
2. Respondent does not have any rights or legitimate interests in the <mgk.info> domain name.
3. Respondent registered and used the <mgk.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McLaughlin Gormley King Company, is an international company that has manufactured and sold pesticide products since 1920. Complainant owns the MGK trademark registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 654,626 issued Nov. 19, 1957). Complainant also owns and operates the <mgk.com> and <mgk.org> domain names in conjunction with its operations.
Respondent registered the <mgk.info> domain name on September 15, 2001. The disputed domain name currently resolves to a web page that displays third-party links and advertisements for Complainant’s direct 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 has demonstrated its rights in the MGK mark
through registration with the USPTO pursuant to 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.”).
Respondent’s <mgk.info> domain name includes Complainant’s MGK mark in its entirety while adding the generic top-level domain “.info.” The Panel finds this addition to be immaterial since every domain name requires a top-level domain. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Since Complainant has established a prima facie case supporting its allegations, Respondent thus bears the burden to prove that it does have rights or legitimate interests pursuant to 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 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).
Based on the evidence within the record, there is no indication that Respondent is commonly known by the disputed domain name. The WHOIS domain name registration information even lists the registrant of record as “Guangzhou Commerce LTD c/o Cai Xui Ping.” Moreover, the corresponding websites list the identity of the owner as “Xiamen Elite Industry Corporation.” Neither of these names relate to the disputed domain name. As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s identical disputed domain name resolves to a
website whose sole function appears to be to display third-party advertisements
and links. Some of these links lead
Internet users to Complainant’s direct competitors within the pesticide
industry. Such use does not constitute a
bona fide offering of goods or
services under Policy ¶ 4(c)(i), since Complainant’s
mark is clearly the tool used by Respondent to garner attention to the
corresponding website. Moreover,
Respondent presumably receives referral fees of some sort for the placement of
these advertisements on the corresponding website. Thus the disputed domain name does not
represent a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel
therefore finds that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶¶ 4(c)(i) and
(iii). See 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).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In this case, Respondent’s disputed domain name was
registered with Complainant’s entire MGK mark as the sole feature, and as such
this Panel has already concluded that the disputed domain name is identical to
the mark. Moreover, Internet users
seeking Complainant would be diverted to this website and be confronted with
links for businesses that compete with Complainant. The Panel therefore finds that Respondent has
disrupted Complainant’s business and has engaged in bad faith registration and
use of the disputed domain name under Policy ¶ 4(b)(iii). See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also 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).
It is quite foreseeable that these Internet users may choose
the disputed domain name for their Internet search, in the hopes of reaching
Complainant. Such Internet users would,
by Respondent’s design, be routed away from
Complainant and to Respondent’s corresponding website. To then be confronted with third-party
advertisements, some of which compete with Complainant, would be both confusing
and potentially frustrating. In the
interim, Respondent benefits from this diversion through referral fees
received, should the Internet user attempt to navigate the myriad of links
populating Respondent’s corresponding website.
Respondent has therefore created a likelihood of confusion as to
Complainant’s source and sponsorship of the disputed domain name and
corresponding website. The Panel
therefore finds that Respondent has engaged in bad faith registration and use
under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also 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.’”).
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 <mgk.info> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 4, 2008
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