Mace Security International, Inc. v. FOR
Claim Number: FA1001001301157
Complainant is Mace Security International, Inc. (“Complainant”), represented by Robert
Heslin, of Heslin Rothenberg Farley & Mesiti, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <macedvr.com>, registered with The Planet Internet Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 4, 2010.
On January 4, 2010, The Planet Internet Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <macedvr.com> domain name is registered with The Planet Internet Services, Inc. and that Respondent is the current registrant of the name. The Planet Internet Services, Inc. has verified that Respondent is bound by the The Planet Internet Services, 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 January 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 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 postmaster@macedvr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant operates a business selling a variety of security products and services.
Part of Complainant’s product line includes digital video recorders (“dvr”).
Complainant provides its security product and services under its MACE trademark.
Complainant has registered its MACE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,909,927, issued Aug. 8, 1995).
Respondent is not authorized to use the MACE mark.
Respondent registered the disputed domain name on June 6, 2004.
The disputed domain name redirects Internet users to Respondent’s website selling security products in competition with the business of Complainant.
Respondent’s <macedvr.com> domain name is confusingly similar to Complainant’s MACE mark.
Respondent does not have any rights to or legitimate interests in the <macedvr.com> domain name.
Respondent registered and uses the <macedvr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established
rights in the MACE trademark
pursuant to Policy ¶ 4(a)(i) through its USPTO mark registration. See Intel Corp. v. Macare, FA 660685 (Nat.
Arb. Forum Apr. 26, 2006) (finding that a complainant
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see
also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <macedvr.com> domain name is confusingly similar to Complainant’s MACE mark. The disputed domain name simply adds to Complainant’s MACE mark the descriptive abbreviation “dvr,” which relates to Complainant’s digital video recording products, and also adds the generic top-level domain (“gTLD”) “.com”. The additions of a descriptive abbreviation and a gTLD are insufficient adequately to distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity between a domain name and a competing mark where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s domain name from that complainant’s mark under Policy ¶ 4(a)(i)); further see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MACE mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <macedvr.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the contested domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has made out a sufficient prima facie case. Because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the MACE mark. Moreover, the pertinent WHOIS information does not reflect that the registrant is commonly known by the disputed domain name. Therefore, we are constrained to conclude that Respondent has not established rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
We also note that there is no dispute as to Complainant’s allegation to the effect that the <macedvr.com> domain name resolves to Respondent’s commercial website which offers security products in competition with the business of Complainant. In the circumstances presented, we may presume that Respondent receives revenues in the form of click-through fees for each visit by an Internet user to the sites featured on the resolving website. Respondent’s use of the disputed domain name for this purpose does not constitute 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). 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a contested domain name pursuant to Policy ¶ 4(c)(iii)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to form a domain name with the intent to attract Internet users to its website, which offered for sale both that complainant’s products and those of that complainant’s business competitors).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent uses the <macedvr.com> domain name to resolve to its own commercial website which competes with the business of Complainant. Internet users searching for Complainant’s security products may instead purchase Respondent’s competing products. Respondent’s use of the disputed domain name as alleged disrupts Complainant’s security business, which constitutes bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor’s within the meaning of Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005):
The
Respondent is a travel agency and thus operates in the same business as the
Complainant. The parties can therefore be considered as competitors. The Panel
thus finds that the Respondent registered the domain name primarily for the
purpose of disrupting the business of a competitor, which constitutes evidence
of registration and use in bad faith under Policy 4(b)(iii).
Further, Respondent benefits commercially from its use of the contested domain name. Respondent offers products and services likely to be of interest to Internet users interested in Complainant’s security business. These Internet users may become confused as to the possibility of Complainant’s association with or sponsorship of the disputed domain name and resolving website. Respondent evidently attempts to profit from this confusion. Therefore, we conclude that Respondent’s use of the disputed domain name as alleged constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark, and where the domain name was used to host a commercial website offering services similar to those offered by that complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name there at issue to resolve to a website where services are offered to Internet users which are similar to those marketed by a complainant is likely to confuse such users into believing that that complainant is the source of or sponsor of the services offered at the resolving site).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <macedvr.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 17, 2010
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