Monaco RV, LLC v. a beebe
Claim Number: FA1009001344602
PARTIES
Complainant is Monaco RV, LLC, (“Complainant”) represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd., Washington, USA. Respondent is a beebe, (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monacorv.us>, registered with .US REGISTRAR L.L.C..
PANEL
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.
Charles A. Kuechenmeister.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 2, 2010; the Forum received a hard copy of the Complaint on September 8, 2010.
On September 2, 2010, .US REGISTRAR L.L.C. confirmed by e-mail to the Forum that the domain name <monacorv.us> is registered with .US REGISTRAR L.L.C. and that the Respondent is the current registrant of the name. .US REGISTRAR L.L.C. has verified that Respondent is bound by the .US REGISTRAR L.L.C. 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 10, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2010 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”).
A timely Response was received and determined to be complete on September 16, 2010.
Complainant submitted a timely Additional Submission on September 21, 2010 in compliance with Supplemental Rule 7.
Respondent submitted a timely Additional Submission on September 23, 2010 in compliance with Supplemental Rule 7.
On September 29, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Monaco RV, LLC [hereinafter Monaco or Complainant], bases its Complaint on its company name and trade name Monaco RV, LLC, its U.S. Trademark Registration for the mark MONACO, Registration No. 2,655,209, owned by its affiliated company, International Truck Intellectual Property Company, LLC, and several domain name registrations incorporating its MONACO and MONACO COACH trademarks and trade names, including, <monacorv.com>, <monacocoach.com> and <monaco-online.com>.
Through its predecessors in interest, Monaco was founded in 1969 to build recreational vehicles (hereinafter also known as “RVs”). Based on the latest available retail registration data, Monaco’s brands are number three in diesel-powered Class A recreational vehicles and number five in all Class A recreational vehicles, in terms of U.S. market share. In the Canadian market, Monaco is the number one manufacturer of Class A motorhome RVs.
Monaco invests significant resources in advertising and promoting its Monaco trade name and trademark. Based on Monaco’s extensive and exclusive use of the MONACO trademark and Monaco RV trade name in connection with the manufacture and sale of its highest quality recreational vehicles, the MONACO trademark and trade name are famous in connection with the company’s goods.
Monaco also uses its MONACO trademark and trade name in connection with its company’s internet web site addresses, namely, <monacorv.com>, <monacocoach.com> and <monaco-online.com>. Monaco’s internet web sites allow consumers to find information about Monaco, its products and related goods and services. It also allows consumers to find dealers that sell Monaco’s recreational vehicles, as well as allowing consumers to buy related goods, such as hats, clothes, decals and the like. Monaco’s <monacorv.com> and <monacocoach.com> sites also offer information on its customer rally events.
The domain name at issue in this dispute is <monacorv.us>. The domain name is virtually identical to Complainant’s MONACO mark and identical to its Monaco RV trade name and its <monacorv.com> domain name, apart from the different TLD extension. Further, Respondent’s domain name is virtually identical to Monaco’s other domain names, <monacocoach.com> and <monaco-online.com>.
Given that Complainant’s goods are recreational vehicles, also known as RVs, that its company name is Monaco RV and that it uses the domain name <monacorv.com> in connection with the promotion of its company and products, consumers are likely to use a natural search of “monacorv.us” to find Complainant’s site.
Tacking on “RV,” a descriptive term identifying Monaco’s products, to Complainant’s MONACO mark does not change the fact that Complainant’s federally-registered MONACO mark remains the prominent feature of the disputed domain name. Numerous ICANN decisions have held that the addition of a non-distinctive, descriptive or generic term does not change the overall impression of a domain name.
Similarly, in the present matter, the Respondent’s use of “rv” at the end of “monaco” does not change the overall commercial impression of the Complainant’s MONACO trademark, and is thus confusingly similar to Monaco’s mark and trade name. When consumers enter in the <monacorv.us> domain name and are not connected to Monaco’s web site, but rather the Respondent’s web site, they will be confused as to whether Monaco owns the site or is affiliated in some way with the <monacorv.us> web site.
Respondent should be considered as having no legitimate rights in the domain name as it has not asserted a trade name incorporating Monaco. Rather, the domain name is owned by an individual identified in the record as A. Beebe. Complainant has not licensed Respondent to use its mark, nor is Respondent affiliated with, or authorized by Complainant to use Complainant’s MONACO mark in connection with the domain name. Further, Complainant’s rights in the MONACO mark date back to 1969 and well predate registration of the domain name by Respondent.
Further, the domain name resolves to a website offering sponsored listings, including links to third party websites offering goods and services associated with Complainant’s line of products, recreational vehicles. As such, Respondent is not using the domain name for a legitimate purpose as defined in Section 4(c) of the Policy.
Respondent’s continuing use of a domain name identical to Monaco’s company name and virtually identical to its trademark is likely to cause confusion for consumers searching the internet. When consumers seeking Monaco’s web site instead access the Respondent’s site at <monacorv.us> it is likely that many consumers will be confused as to whether the site associated with the domain name is Monaco’s web site or if the site is sponsored in some way by Monaco. This is further heightened by the fact that the sponsored listings on the site are associated with recreational vehicles. As a result, consumers seeking Monaco’s web site may cease their search and not reach Complainant’s site, thus interfering with Monaco’s ability to conduct business on the internet. Such interference with Monaco’s ability to conduct business on the internet under its trade name and trademarks constitutes bad faith use of the domain name as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.
Respondent’s having registered <monacorv.us> in bad faith can be inferred from the fact that Respondent deliberately chose to register a domain name that entirely incorporated Complainant’s MONACO mark and trade name. Adding “rv” to “monaco” in the domain name correlates directly with the products offered by Monaco, namely, recreational vehicles. As such, it can be inferred that Respondent is aware of Complainant and its products. Registration with actual or constructive knowledge of a trademark holder’s rights in a mark is evidence of bad faith registration.
Respondent’s registration of the domain name is creating a likelihood of confusion with the MONACO mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site. If consumers are seeking the Monaco web site and mistakenly access the Respondent’s site, it is likely that many consumers will assume that the site is affiliated with Monaco RV, thereby creating confusion for consumers, disrupting Monaco’s business and damaging its reputation. Such interference with the MONACO mark and Monaco RV trade name constitutes bad faith use of the domain name as defined by Paragraph 4(b) of the Domain Name Dispute Resolution Policy.
B. Respondent
MONACO is a common or generic term. It is the name of a country in Europe, and is used by at least 59 other companies in the U.S.
MONACO RV is a combination of two generic terms, and is not a registered trademark.
The trademark relied upon by Complainant is MONACO {all caps}. The domain name is <monacorv.us>, which is not capitalized, and which contains an additional term, “rv,”
plus a TLD indication. It is neither identical to nor confusingly similar with Complainant’s trademark, MONACO, and cannot be confused with that mark.
Further, Complainant did not acquire any interest in the mark MONACO until June 24, 2009, some twenty days after Respondent registered <monacorv.us> (June 3, 2009), when Complainant received an assignment thereof from the bankruptcy trustee for Monaco Motor Coach Corporation.
After Respondent purchased the domain name on June 3, 2009, Respondent made preparations to use it for a business, for a combination of parts refurbishment and service, and was in the process of narrrowing down the services it would offer. Shortly after it began preparations to use the domain name Respondent found that it did not have the resources to put the plan into practice and the project was placed on hold. Respondent intends to use the domain name at a later time.
Respondent has continued to do periodic searches for potential employees and has engaged in networking efforts to promote its proposed business and has renewed the domain name, all demonstrating its preparations to use the domain name in connection with a bona fide offering of goods or services.
Respondent did not mislead consumers in any way. The webpage referred to by Complainant is a place holder page posted by the registrar, not by Respondent.
Prior to purchasing the domain name, Repondent conducted a trademark search for “monacorv” and none was found.
Respondent did not register the domain name to prevent Complainant from using its MONACO mark in a correponding domain name. When Respondent purchased the domain name it had no reason to know that in the future a company would begin using the name “Monaco RV.”
Respondent did not register the domain name to disrupt Complainant’s business. Respondent is not in competition with Complainant, and to the best of Respondent’s knowledge Complainant did not exist as of the date Respondent registered the domain name.
Respondent has not attempted to attract internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark. Complainant did not even own the MONACO mark until after Respondent registered <monacorv.us>, and even now there is no trademark for “Monaco RV.”
Further, shortly after Complainant filed this case, Respondent conducted internet searches for “Monaco” and “Monaco RV.” References to the Principality of Monaco and Complainant appeared but there was no reference to <monacorv.us>. Respondent has not submitted the domain name to any search engines yet.
Complainant is guilty of reverse domain name hijacking in that it is attempting to take <monacorv.us> away from Respondent, its righful owner, without any right under the Policy to do so, simply in order to promote its newly-organized business.
C. Additional Submissions
Complainant:
Complainant’s trademark registration, attached to the Amended Complaint as Exhibit A, demonstrates Complainant’s ownership of the MONACO mark and the validity thereof. Although Complainant’s predecessor, Monaco Coach Corporation, was the subject of a bankruptcy proceeding, the trademark survived that proceeding and was lawfully acquired by Complainant.
Having taken no steps to launch a website in connection with <monacorv.us>, Respondent is not making any demonstrable preparations to use the name in connection with alleged legitimate content and has not demonstrated any legitimate right or interest in the domain name.
Even if Respondent had launched a business using the domain name, it would still lack a legitimate purpose, as <monacorv.us> represents Complainant’s products and business. The very nature of the domain name precludes a legitimate use by Respondent.
Respondent’s bad faith is demonstrated by Respondent’s having registered <monacorv.us> long after Complainant’s predecessor’s registration of its mark MONACO in 2002. Respondent knew or should have known of Complainant’s long-term use of the mark at the time Respondent registered <monacorv.us>. such knowledge is domonstrated by Respondent’s decision to register a domain name incorporating the “RV,” a known acronym for Complainant’s products.
Complainant is merely attempting to protect its trademark rights by the within proceeding. It is not guilty of reverse domain name hijacking.
Respondent:
Respondent’s Additional Submission essentially repeats the facts and arguments set forth in the Response.
DISCUSSION AND FINDINGS
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.”
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;
(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.
Identical and/or Confusingly Similar
Complainant asserts rights in its MONACO mark through its affiliate company, International Truck Intellectual Property Company, LLC and its predecessors-in-interest which holds a trademark registration for the MONACO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,655,209 issued December 3, 2009) in connection with recreational vehicles. See, Exhibit A to Amended Complaint. The registration of a mark with the USPTO is sufficient evidence of Complainant’s rights in its MONACO mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also 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.”).
Respondent’s <monacorv.us> domain name is confusingly similar to Complainant’s MONACO mark. Respondent’s domain name incorporates the entirety of Complainant’s MONACO mark and adds the descriptive abbreviation “rv” which refers to Complainant’s recreational vehicles and related goods and services. The addition of a term descriptive of Complainant’s business, along with a generic top-level domain (“gTLD”), does not distinguish the domain name from Complainant’s mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <monacorv.us> domain name is thus confusingly similar to Complainant’s MONACO mark under Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <monacorv.us> domain name predates Complainant’s alleged rights in the mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under UDRP ¶ 4(a)(i) but may prevent a finding of bad faith under UDRP ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under [UDRP] ¶ 4(a)(i).”). Further, the fact that Complainant’s acquisition of the MONACO mark occurred after Respondent’s registration of the domain name is immaterial. The rights associated with the mark MONACO have been in place and fully protected by federal law since its first use in 1969. See remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
The domain name is confusingly similar to the MONACO mark, in which the Complainant has substantial and demonstrated rights.
Rights or Legitimate Interest
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interest in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interest. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant asserts, and the WHOIS information confirms, that the registrant of the domain name is “a beebe,” a name that does not use or include reference to any element of the domain name. Complainant further asserts and the evidence demonstrates that Complainant has not licensed Respondent to use its MONACO mark, nor is Respondent affiliated with Complainant. These factors indicate that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii), and is not otherwise authorized to use it or the Complainant’s MONACO mark. Complainant also asserts that although Respondent claims in its Response that it registered the disputed domain name in connection with a “refurbishment/service company,” Respondent has not taken any steps to launch a website in connection with the disputed domain name in the more than fifteen months since Respondent registered the domain name, and has thus not made any demonstrable preparations to use the name in connection with a legitimate content. Considering the foregoing, the Panel concludes that Complainant has established a prima facie case that Respondent lacks rights or legitimate interest in the domain name under Policy ¶ 4(a)(ii), and the burden accordingly shifts to Respondent to show that it does have rights or legitimate interest.
Respondent does not assert that it is known by the domain name. Instead, it claims to have made preparations to use it for a business, for a combination of parts refurbishment and service, and was in the process of narrowing down the services it would offer. Respondent alleges that after such preparations began it found that it did not have the resources to put the plan into practice and place the project was placed on hold, intending to use the domain name at a later time. Even after this decision was taken, according to Respondent, it continued to do periodic searches for potential employees, engaged in networking efforts to promote its proposed business, and renewed the domain name, all demonstrating its preparations to use the domain name in connection with a bona fide offering of goods or services within the meaning of ¶ 4(c)(ii).
Respondent has failed, however, to produce documentary or any other independent evidence of such preparations, and the Panel is left with nothing but Respondent’s naked allegations in this regard. Additionally, in light of the striking degree to which the domain name actually represents the Complainant, not only as to entity name but type of business as well, coupled with the fact that Complainant’s mark had the benefit of trademark registration and protection for many years prior to Respondent’s registration of the domain name, it is not possible for Respondent to acquire rights or legitimate interest in that domain even if it had been making the preparations alleged. As Complainant asserts, the very nature of the domain name precludes a legitimate use.
Respondent does not assert that the use actually being made of the domain name, i.e., a place-holder web page posted by the registrar which directs internet users to websites representing competitors of Complainant, is caused by or attributable to Respondent, or that it should give Respondent some right or legitimate interest in the domain name. Nor does Respondent offer any other evidence to support its claim of right or legitimate interest in the domain name.
Registration and Use in Bad Faith
Respondent’s resolving website displays links to third-party websites which compete with Complainant in the recreational vehicle industry, and because of the confusing similarity of the domain name to Complainant’s name and products, it is likely that internet users seeking Complainant’s products and services may instead purchase them from a competitor. This constitutes a disruption of Complainant’s business, and is one of the bases for a finding that Respondent registered and used the disputed domain name in bad faith. See, 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Additionally, Respondent deliberately chose to register a domain name that entirely incorporated Complainant’s MONACO mark and trade name. Further adding “rv” to “monaco” in the domain name correlates directly with the products offered by Monaco, namely, recreational vehicles. From this it can be inferred, and indeed is probable, that Respondent was aware of Complainant and its products at the time of registration. Respondent has certainly been aware of Complainant and its products since Complainant’s first contact with Respondent about this matter and its use of the domain name persists. Registration and use with actual or constructive knowledge of a trademark holder’s rights in a mark is also evidence of bad faith registration. See Digi Int’l v. DDI Sys., FA 124506 (NAF Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”). Interestingly enough, Respondent never stated that it was unaware of the MONACO mark at the time it registered the domain name. It only stated that prior to registering the domain name it conducted a trademark search for ‘Monacorv” and none was found. Respondent further emphasizes that the Complainant entity, Monaco RV LLC, was not organized until after the registration. Neither of these assertions, however, goes to the heart of the matter, i.e., whether Respondent knew of the MONACO mark at the time of registration. The evidence supports a finding that it did have such knowledge, and registration of <monacorv.us> with such knowledge is evidence of bad faith.
Based upon the foregoing, the Panel finds and determines that Respondent has registered and is using the domain name in bad faith.
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
It is Ordered that the <monacorv.us> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister
October 12, 2010
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