national arbitration forum

 

DECISION

 

Middle Atlantic Products, Inc. v. Private Registration

Claim Number: FA1107001397984

 

PARTIES

Complainant is Middle Atlantic Products, Inc. (“Complainant”), represented by Anthony J. Palumbo of Drinker Biddle & Reath LLP, Pennsylvania, USA.  Respondent is Private Registration (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <middleatlanticproducts.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2011; the National Arbitration Forum received payment on July 12, 2011.

 

On July 12, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <middleatlanticproducts.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 July 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2011 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@middleatlanticproducts.com.  Also on July 15, 2011, 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 August 8, 2011,  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <middleatlanticproducts.com> domain name is confusingly similar to Complainant’s MIDDLE ATLANTIC PRODUCTS, INC. mark.

 

2.    Respondent does not have any rights or legitimate interests in the <middleatlanticproducts.com> domain name.

 

3.    Respondent registered and used the <middleatlanticproducts.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Middle Atlantic Products, Inc., has used the MIDDLE ATLANTIC PRODUCTS, INC. mark for over 30 years in connection with its custom designed shelves, racks, cabinets, consoles and other enclosures for electronic and control room equipment.  Complainant has registered a number of domain names incorporating its MIDDLE ATLANTIC PRODUCTS, INC. mark, including <middleatlanticproducts.net>, <middleatlanticproducts.org>, and <middleatlanticproducts.info> among others.  Complainant has a trademark registration for its MIDDLE ATLANTIC PRODUCTS, INC. mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,172,930 registered November 21, 2006).

 

Respondent, Private Registration, registered the <middleatlanticproducts.com> domain name on November 4, 2008.  The disputed domain name resolves to a directory website with third-party links to commercial sites, some of which sell goods and services that directly compete with Complainant’s custom-designed electronic organizers. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has established rights in the MIDDLE ATLANTIC PRODUCTS, INC. mark.  Past panels have decided that rights in a mark may be established by trademark registration with a federal trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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 is not required to register its mark within the country where Respondent resides or operates, as long as it has a registered mark within some jurisdiction.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Here, Complainant holds a trademark registration for its MIDDLE ATLANTIC PRODUCTS, INC. mark with the USPTO (Reg. No. 3,172,930 registered November 21, 2006).  The Panel, therefore, decides that Complainant has proven its rights in the MIDDLE ATLANTIC PRODUCTS, INC. mark (Reg. No. 3,172,930 registered November 21, 2006) through its trademark registration with the USPTO under Policy ¶ 4(a)(i).

 

Furthermore, Complainant alleges that Respondent’s <middleatlanticproducts.com> domain name is confusingly similar to its MIDDLE ATLANTIC PRODUCTS, INC. mark.  The disputed domain name incorporates Complainant’s mark in its entirety and only changes it by deleting the space between the words of the mark, deleting the abbreviated term “inc.” and comma, and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that deleting spaces and adding a gTLD does not affect a confusingly similar analysis.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  The Panel also finds that deleting punctuation does not sufficiently alter the disputed domain name from Complainant’s mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).  Finally, the Panel finds that deleting a single word of a mark does not properly distinguish the disputed domain name from Complainant’s mark.  See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).  The Panel concludes that Respondent’s <middleatlanticproducts.com> domain name is confusingly similar to Complainant’s MIDDLE ATLANTIC PRODUCTS, INC.  mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name.  In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel found 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).  Complainant has presented a prima facie case in support of its claims.  Respondent failed to respond to the Complaint, which the Panel may interpret as Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).   However, the Panel will first look to the record in order to discover whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant maintains that Respondent is not commonly known by the <middleatlanticproducts.com> domain name.  The WHOIS information suggests that the name was registered under “Private Registration,” not similar to the disputed domain name.  Complainant also claims that Respondent has received no authorization or license from Complainant to use its MIDDLE ATLANTIC PRODUCTS, INC. mark within the disputed domain name.  The Panel finds that Respondent is not commonly known by the <middleatlanticproducts.com> domain name, under Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Respondent’s <middleatlanticproducts.com> domain name resolves to a directory website featuring third-party links, some of which sell goods and services directly competing with Complainant’s electronic storage design business.  These third-party links likely provide Respondent with commercial benefit through the receipt of click-through fees.  The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors is not 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 various 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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 finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant has indicated that Respondent’s registration and use of the disputed domain name disrupts its business.  Internet users shopping for Complainant’s goods and services may find Respondent’s website instead and buy similar goods and services from a competing third-party link as a result.  The Panel finds that Respondent’s registration and use of the <middleatlanticproducts.com> domain name disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

The Panel assumes that Respondent generates click-through fees from the aforementioned third-party links.  Respondent’s disputed domain name resolves to a directory website featuring these third-party links, some to Complainant’s competitors in the electronic storage industry.  Given the confusingly similar disputed domain name, Internet users searching for Complainant may become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured content.  Respondent tries to commercially gain from this confusion by collecting click-through fees.  The Panel finds that Respondent’s registration and use of the <middleatlanticproducts.com> domain name constitutes bad faith 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 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)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <middleatlanticproducts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 22, 2011

 

 

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