Masai Marketing &
Trading AG v. Muhammad Khalid c/o Ovalcom, Inc
Claim Number: FA0909001284627
PARTIES
Complainant is Masai Marketing & Trading AG, (“Complainant”) represented by Grace Han Stanton, of Perkins
Coie LLP, Washington, USA. Respondent is Muhammad Khalid c/o Ovalcom,
Inc, (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbt-shoes.us>, registered with Enom, Inc.
PANEL
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 15,
2009; the Forum received a hard copy of the Complaint on September 16, 2009.
On September 16, 2009, Enom, Inc. confirmed by e-mail to the Forum that
the <mbt-shoes.us>
domain name is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with the U.S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 24, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 14, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the
parties a Notification of Respondent Default.
On October 21, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Sandra J.
Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <mbt-shoes.us> domain name is confusingly similar to Complainant’s MBT mark.
2.
Respondent does not have any rights or
legitimate interests in the <mbt-shoes.us>
domain name.
3.
Respondent registered and used the <mbt-shoes.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Masai
Marketing & Trading AG, sells patented footwear products world-wide under
the MBT mark. Complainant holds several
registrations of the MBT mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No. 2,408,456 issued November 28, 2000).
Respondent, Muhammad Khalid c/o Ovalcom, Inc.,
registered the <mbt-shoes.us>
domain name on March 22, 2007. The disputed
domain name resolves to a website that looks similar to Complainant’s website,
using Complainant’s logo, and purports to sell Complainant’s products. The resolving website also contains
hyperlinks to third-party websites, some of which directly compete with
Complainant.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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 name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant has sufficiently established rights in the MBT mark under Policy ¶ 4(a)(i) through its several registrations of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”).
Respondent’s <mbt-shoes.us> domain name contains Complainant’s MBT mark in its entirety, adds the a hyphen, adds the descriptive term “shoes,” which describes Complainant’s products, and adds the country code top-level domain (“ccTLD”) “.us.” The Panel finds that none of these additions to Complainant’s mark sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds that the <mbt-shoes.us> domain name is confusingly similar to Complainant’s MBT mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the [UDRP] despite the addition of other words to such marks”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a [UDRP] ¶ 4(a)(i) confusingly similar analysis.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to the <tropar.us> domain name).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant make this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. Based on the Complaint, the Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from which no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <mbt-shoes.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS information for the <mbt-shoes.us> domain name lists “Muhammad Khalid c/o Ovalcom,
Inc” as the registrant, which does not indicate that Respondent is
commonly known by the <mbt-shoes.us>
domain name. Respondent has not offered any evidence to
suggest otherwise. Moreover, Complainant
asserts that Complainant has not licensed or authorized Respondent to use the MBT
mark. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(iii). 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 M. Shanken Commc’ns
v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent
was not commonly known by the <cigaraficionada.com> domain name under
UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the
record).
Respondent’s <mbt-shoes.us> domain name resolves to a website that displays hyperlinks to third-party websites, some of which directly compete with Complainant’s shoe products business. The Panel presumes that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s use of the <mbt-shoes.us> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 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 [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Furthermore, the
Panel finds that Respondent’s attempt to sell Complainant’s products on the
website resolving from <mbt-shoes.us>
domain name, which contains
Complainant’s logo, constitutes an attempt by Respondent to pass itself off as
Complainant. The Panel finds that
Respondent’s attempt to pass itself off as Complainant is further evidence that
Respondent lacks rights and legitimate interests in the <mbt-shoes.us> domain name under Policy ¶ 4(a)(ii). See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the respondent attempts to pass itself off as the complainant
online, which is blatant unauthorized use of the complainant’s mark and is
evidence that the respondent has no rights or legitimate interests in the
disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i),
or a legitimate noncommercial or fair use pursuant to [UDRP] ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Registration
and Use in Bad Faith
Since Respondent registered the <mbt-shoes.us> domain name on March 22, 2007, the
disputed domain name has resolved to a
website that contains hyperlinks to Complainant’s competitors’ websites. The Panel finds that Respondent’s use of the
website disrupts Complainant’s business.
Accordingly, the Panel finds that such a disruption constitutes bad
faith registration or use under Policy ¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under UDRP ¶ 4(b)(iii)); see
also G.D. Searle & Co. v. Celebrex
Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under [UDRP] ¶ 4(b)(iii).”).
Moreover, the Panel finds that Respondent’s use of the confusingly similar <mbt-shoes.us> domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Therefore, Respondent’s presumed attempt to commercially gain from this likelihood of confusion via the click-through fees received from the aforementioned hyperlinks constitutes bad faith registration or use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Finally, the Panel finds that Respondent’s attempt to pass itself off as Complainant, by purporting to sell Complainant’s shoe products, is further evidence of bad faith registration or use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business. . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mbt-shoes.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 2, 2009
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