Mariachi Imports Inc. v. Telecom Tech Corp.
Claim Number: FA0912001299691
Complainant is Mariachi Imports Inc. (“Complainant”), represented by Allison
Z. Gifford, of Duane Morris LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <madmats.com>, registered with Bargin Register, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2010 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.
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 <madmats.com> domain name is identical to Complainant’s MAD MATS mark.
2. Respondent does not have any rights or legitimate interests in the <madmats.com> domain name.
3. Respondent registered and used the <madmats.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mariachi Imports Inc., is in the business of
selling decorative area rugs.
Complainant has registered its MAD MATS mark with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 3,131,025 issued
Respondent registered the disputed domain name on
In the Additional Submission, Complainant proffered evidence
Respondent has been a party to numerous UDRP proceedings in which relief was
granted to the respective complainant. See e.g., Baylor Univ. v. Telecom Tech Corp.,
FA 1142636 (Nat. Arb. Forum
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 finds Complainant’s rights in the registered MAD
MATS mark date back to the filing date of the trademark registration. Respondent
registered the disputed domain name on
Complainant contends that Respondent’s <madmats.com> domain name is
identical to its MAD MATS mark under Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s MAD MATS mark in its entirety with the omission of the space
between the terms of the mark and the affixation of the generic top-level
domain “.com.” The Panel finds that
these alterations irrelevant and thus find the disputed domain name is
identical to Complainant’s MAD MATS mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name. Based upon the
allegations made in the Complaint, the Panel finds that Complainant has
established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to
Respondent. Since Respondent has not responded to the Complaint, the
Panel may presume that Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii).
However, the Panel in its discretion chooses to examine the record to
determine whether Respondent has any rights or legitimate interests
pursuant to the factors outlined in Policy ¶ 4(c). See AOL
LLC v. Gerberg, FA 780200
(Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing
that Respondent does not have rights or legitimate interest in the subject
domain names, which burden is light. If Complainant satisfies its burden,
then the burden shifts to Respondent to show that it does have rights or
legitimate interest in the subject domain names.”); see also Broadcom Corp.
v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website
featuring links to third-party entities that offer competing rug products. The Panel finds Respondent’s use of the
disputed domain name is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain name under
Policy ¶ 4(c)(iii).
Furthermore, Complainant contends that Respondent is not
authorized to use its MAD MATS mark and Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies the
registrant as “Telecom Tech Corp.” The
Panel finds Respondent is not commonly known by the <madmats.com>
domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v.
740335 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
In the Additional Submission, Complainant asserts and
provides evidence Respondent has been a party to numerous UDRP proceedings in
which relief was granted to the respective complainant. See
e.g., Baylor Univ. v. Telecom Tech Corp., FA 1142636 (Nat. Arb. Forum
Respondent’s <madmats.com> domain name resolves
to a website featuring links to third-party entities that sell rugs in
competition with Complainant. The Panel
finds Respondent’s use of the identical disputed domain name constitutes a
disruption of Complainant’s business, which is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
The Panel infers that Respondent receives click-through fees from displaying links to third-party competitors of Complainant on the website resolving from the disputed domain name. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and the resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds 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 <madmats.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 12, 2010
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