Jaquith Industries, Inc. v.Bryce MacKinnon
Claim Number: FA1011001360307
Complainant is Jaquith Industries. Inc. (“Complainant”), represented by George R. McGuire of Bond, Schoeneck & King, PLLC, New York, USA. Respondent is Bryce MacKinnon (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaquithindustries.com>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2010; the National Arbitration Forum received payment on November 24, 2010.
On November 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jaquithindustries.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@jaquithindustries.com. Also on December 1, 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 December 27, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <jaquithindustries.com> domain name is identical to Complainant’s JAQUITH INDUSTRIES mark.
2. Respondent does not have any rights or legitimate interests in the <jaquithindustries.com> domain name.
3. Respondent registered and used the <jaquithindustries.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jaquith Industries, Inc., provides evidence that it has been using the JAQUITH INDUSTRIES mark since it was established as a corporation with the state of New York in 1976.
Respondent, Bryce MacKinnon, registered the disputed domain name on April 14, 2010. The disputed domain automatically redirects Internet users to Respondent’s competing website at <millardtowers.com>.
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.
Complainant has not registered the JAQUITH INDUSTRIES mark, but pursuant to Policy ¶ 4(a)(i), governmental trademark registration is not necessary to establish rights in a mark. Earlier panels have determined that so long as a complainant can establish common law rights through proof of sufficient secondary meaning associated with a mark, federal registration is not required. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant uses the JAQUITH INDUSTRIES mark in connection with its airport lighting hardware, paving forms, and custom fabrication services. Complainant also operates a website at <jaquith.com> which Complainant registered on December 13, 1996. Complainant asserts that its website has been in continuous use since that date, as shown by numerous archived versions of Complainant’s website that Complainant submits. Complainant asserts that its website has received thousands of hits from countries all over the world and that, as a result, Complainant’s JAQUITH INDUSTRIES mark has gained recognition in the minds of consumers. Complainant has used the JAQUITH INDUSTRIES mark extensively since its company’s incorporation in 1976. The mark has been mentioned numerous times in trade journals and newspaper articles and Complainant has made sizeable expenditures on advertising since 1976. The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the JAQUITH INDUSTRIES mark through continuous and extensive commercial use predating Respondent’s registration of the <jaquithindustries.com> domain name under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Complainant argues that Respondent’s <jaquithindustries.com> domain name is identical to Complainant’s JAQUITH INDUSTRIES mark because the disputed domain name differs only by removing the space in between the words in the mark and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have found that because these two elements are essential to a domain name, the removal of a space and the addition of a gTLD render a disputed domain name identical to a complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s <jaquithindustries.com> domain name is identical to Complainant’s JAQUITH INDUSTRIES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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.”). Nevertheless, the Panel will examine the record pursuant to Policy ¶ 4(c) to determine whether or not Respondent has rights or legitimate interests in the disputed domain name.
There is no evidence set forth in the record to suggest that Respondent is commonly known by the <jaquithindustries.com> domain name. The WHOIS information identifies the domain name registrant as “Bryce MacKinnon.” Complainant asserts that Respondent has not been authorized to use the JAQUITH INDUSTRIES. Therefore, the Panel contends that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <jaquithindustries.com> domain name to automatically redirect Internet users to <millardtowers.com> which is a website in direct competition with Complainant’s business. The Panel finds that this does not constitute a bona fide offering of good or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to 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 pursuant to Policy ¶ 4(c)(iii)); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the <jaquithindustries.com> domain name operates as a disruption to Complainant’s business. The disputed domain name automatically redirects Internet users, seeking Complainant’s site, to the website of Respondent who offers goods and services in direct competition with Complainant. The Panel finds this registration and use to be evidence of bad faith pursuant to Policy ¶ (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to 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).”).
Respondent likely registered and is using the disputed domain name, which is identical to Complainant’s mark, in an attempt to create confusion. Internet users likely reach Respondent’s competing website when they are attempting to find Complainant’s official website. Respondent likely profits from the traffic he generates in this confusing manner, as he offers goods and services which directly compete with Complainant’s business. The Panel concludes that this constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaquithindustries.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 3, 2011
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