Monaco RV, LLC v. Texas International Property Associates
Claim Number: FA1009001344593
Complainant is Monaco RV, LLC (“Complainant”), represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd., Washington, USA. Respondent is Texas International Property Associates (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monacorv.net>, registered with Compana, LLC.
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 September 2, 2010.
On September 3, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <monacorv.net> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 September 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@monacorv.net by e-mail. Also on September 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 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" through submission of a Written Notice, as defined in Rule 1. 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 manufactures recreational vehicles (“RVs”).
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MONACO mark (including Reg. No. 2,655,209, issued December 3, 2002).
Complainant also owns the <monacorv.com> domain name, which resolves to its official website.
Complainant is not affiliated with Respondent.
Respondent registered the <monacorv.net> domain name on January 31, 2006.
The disputed domain name resolves to a directory website that provides links to third-party websites, some of which compete with Complainant’s business.
Respondent profits from its use of the disputed domain name through the receipt of click-through fees.
Respondent’s <monacorv.net> domain name is confusingly similar to Complainant’s MONACO mark.
Respondent does not have any rights to or legitimate interests in the <monacorv.net> domain name.
Respondent registered and uses the <monacorv.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical 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 claims rights in the MONACO mark through its registrations of the mark with the USPTO. These registrations sufficiently prove Complainant’s rights in the MONACO mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <monacorv.net> domain name is confusingly similar to Complainant’s MONACO mark. The domain name fully incorporates Complainant’s mark, and merely adds the abbreviation “rv,” a common abbreviation for “recreational vehicle,” which describes Complainant’s products. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.net” to Complainant’s mark in forming the domain name. These additions do not render Respondent’s domain name distinct from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to a complainant’s registered service mark, KELSON); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity 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).
Accordingly, the Panel determines that Respondent’s <monacorv.net> domain name is confusingly similar to its MONACO mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make out a prima facie showing that Respondent lacks rights and legitimate interests in the <monacorv.net> domain name. The burden then shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case in support of its assertions under this head of the Complaint, while Respondent has failed to respond to the allegations of the Complaint. We may properly view Respondent’s failure to submit a response as evidence that it lacks rights and legitimate interests in the disputed domain. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Despite Respondent’s failure to respond, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Complainant is not affiliated with Respondent. Moreover, the WHOIS information lists the registrant of the disputed domain name only as “Texas International Property Associates”, which does not resemble the <monacorv.net> domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <monacorv.net> domain name so as to have demonstrated rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS information and other evidence in the record).
We also note that Complainant claims, without objection from Respondent, that Respondent’s domain name resolves to a directory website that provides links to third-party websites, some of which compete with Complainant’s business. Complainant also claims, again without objection from Respondent, that Respondent profits from its use of the disputed domain name through the receipt of click-through fees. We conclude, therefore, that Respondent is not using the <monacorv.net> domain name to make 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a domain name identical or confusingly similar to a competing mark in order to earn click-through fees via links to the websites of a complainant’s competitors does not represent 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)).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <monacorv.net> domain name redirects Internet users seeking Complainant’s website to a site that provides links to the websites of Complainant’s business competitors. Respondent’s use of the <monacorv.net> domain name in the manner alleged disrupts Complainant’s business, which is evidence of bad faith registration and use of the contested domain name 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a search engine with links to the complainant’s commercial competitors).
Respondent attempts to attract Internet users to its web site, for commercial gain, by creating a likelihood of confusion with the MONACO mark. Respondent presumably profits from its use of the disputed domain name through the receipt of click-through fees. All of this is evidence that Respondent has engaged in bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain because that respondent likely profited from this diversionary scheme).
For these reasons, the Panel finds that Complainant has satisfied 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 <monacorv.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 19, 2010
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