MILIPOL v. Frank Novello / MILIPOL
Claim Number: FA1108001402234
Complainant is MILIPOL (“Complainant”), represented by Cynthia K. Stephenson of Posz Law Group, PLC, Virginia, USA. Respondent is Frank Novello / MILIPOL (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milipol.us>, registered with Fast Domain 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2011; the Forum received a hard copy of the Complaint on August 10, 2011.
On August 9, 2011, Fast Domain Inc. confirmed by e-mail to the Forum that the <milipol.us> domain name is registered with Fast Domain Inc. and that Respondent is the current registrant of the name. Fast Domain Inc. has verified that Respondent is bound by the Fast Domain Inc. 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 August 12, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 1, 2011 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”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <milipol.us> domain name is confusingly similar to Complainant’s MP MILIPOL mark.
2. Respondent does not have any rights or legitimate interests in the <milipol.us> domain name.
3. Respondent registered and used the <milipol.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MILIPOL, organizes trade fairs and exhibitions on the subject of police equipment and civil and military security. Complainant is based in France, but operates in the United States and works with United States police and military. As Respondent resides or operates in the United States, Complainant provides its trademark registration certificate from the United States Patent and Trademark Office (“USPTO”) for its MP MILIPOL mark (Reg. No. 3,972,596 filed September 4, 2009; registered June 7, 2011).
Respondent, Frank Novello / MILIPOL, registered the <milipol.us> domain name on January 19, 2011. The disputed domain name resolves to a website that offers to sell Internet users police and military equipment that competes with the equipment that Complainant and Complainant’s vendors offer.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 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; and
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
As Complainant notes, usTLD Policy ¶ 4(a)(i) features two elements: a complainant must demonstrate rights in a mark and the disputed domain name must be identical or confusingly similar to the complainant’s mark.
Past panels have determined that one way a complainant may establish rights in a mark is by providing evidence of a trademark registration with the USPTO. See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (“Complainant has established rights in the CHECK INTO CASH mark through registration with the USPTO.”); see also Reliant Techs., Inc. v. Jones, FA 1124524 (Nat. Arb. Forum Feb. 19, 2008) (finding that, as the complainant had registered its FRAXEL mark with the USPTO, the complainant had established rights to the mark pursuant to Policy ¶ 4(a)(i)). Complainant provides evidence of its trademark registration with the USPTO for its MP MILIPOL mark (Reg. No. 3,972,596 filed September 4, 2009; registered June 7, 2011). Prior panels have also determined that a complainant’s rights in a mark registered with the USPTO begin on the filing date. See G Media USA, Inc. v. Zarrella, FA 1063379 (Nat. Arb. Forum Oct. 1, 2007) (holding a complainant’s rights in its USPTO trademark registration date back to the filing date); see also Microsoft Corporation v. wang wangyunhai, FA 1386326 (Nat. Arb. Forum June 1, 2011) (concluding that the effective date of a complainant’s trademark rights, for the purposes of Policy ¶ 4(a)(i), is the filing date of a complainant’s USPTO trademark registration). In accordance with this precedent, the Panel concludes that Complainant has established Policy ¶ 4(a)(i) rights in its MP MILIPOL mark, dating back to the filing date of September 4, 2009.
Complainant contends that Respondent’s <milipol.us> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). In the <milipol.us> domain name , Respondent removes the “MP” portion of Complainant’s MP MILIPOL mark and adds the ccTLD “.us.” When determining identicality or confusing similarity, previous panels have held that the removal of a portion of a complainant’s mark and the addition of the country-code top-level domain (“ccTLD”) “.us” fail to adequately distinguish a disputed domain name from a complainant’s mark. See Liberty League Int’l, LLC v. Liu US, FA 1268268 (Nat. Arb. Forum Aug. 9, 2009) (“The Panel finds that removing the term “international” does not sufficiently distinguish a domain name from that mark for the purposes of Policy ¶ 4(a)(i) . . .”); see also Am. Residential Servs. LLC v. mian ahmed, FA 1368694 (Nat. Arb. Forum Mar. 2, 2011) (finding the omission of the term “rooter,” which was the second term of the complainant’s mark, does not negate a finding of confusing similarity); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”). Based on the precedent established by prior panels, the Panel concludes that Respondent’s <milipol.us> domain name is confusingly similar to Complainant’s MP MILIPOL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under the usTLD Policy, Complainant is required to first make a prima face case that Respondent lacks rights and legitimate interests in the <milipol.us> domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights and legitimate interests. See Ulster Bank Ltd. v. Rainer, FA 1154854 (Nat. Arb. Forum Apr. 17, 2008) (holding that, once the complainant established a prima facie case against the respondent, the burden of proof shifted from complainant to respondent). The Panel determines that Complainant has demonstrated a prima facie case. Respondent’s failure to respond to the case may be construed as an admission that it lacks rights and legitimate interests. See Wells Fargo & Co. v. Trust Advocates, Inc., FA 1117262 (Nat. Arb. Forum Jan. 17, 2008) (“Respondent’s failure to respond to the Complaint allows the Panel to conclude that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, this Panel chooses to analyze the case under Policy ¶ 4(c) to determine whether or not Respondent owns any rights or legitimate interests in the <milipol.us> domain name.
A respondent has rights and legitimate interests in a disputed domain name if the respondent owns any service marks or trademarks that reflect the disputed domain name, according to usTLD Policy ¶ 4(c)(i). Past panels have found that a respondent has not satisfied Policy ¶ 4(c)(i) if there is no evidence in the record that the respondent is the owner or beneficiary of a mark that is identical to the disputed domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Complainant contends that Respondent does not have any trademark registrations for the <milipol.us> domain name and that Respondent has failed to respond to this case and provide any evidence of a service mark or trademark. As there is no evidence in the record that Respondent owns any service marks or trademarks that reflect the <milipol.us> domain name, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).
Policy ¶ 4(c)(iii) provides that a respondent owns rights and legitimate interests in a disputed domain name if the respondent is commonly known by the domain name. Prior panels have noted that, if a respondent appears to be commonly known by a disputed domain name based on the WHOIS information, there must be some accompanying evidence for a panel to hold that the respondent is actually commonly known by the domain name. See Coca-Cola Co. v. COCA-COLA, FA 1326950 (Nat. Arb. Forum June 30, 2010) (finding that the WHOIS information listing the respondent as “COCA-COLA” was insufficient to establish common law rights in the face of the complainant’s allegations and evidence to the contrary); see also Retail Royalty co. v. americaneaglekids, FA 1397714 (Nat. Arb. Forum Aug. 26, 2011) (failing to find that the respondent is commonly known by the disputed domain name, even though the WHOIS information is similar to the disputed domain name, because the respondent failed to present any affirmative evidence that it was commonly known by the domain name). The WHOIS information for the <milipol.us> domain name lists “Frank Novello / MILIPOL” as the registrant. Respondent has failed to present any accompanying evidence and Complainant argues that it has not authorized Respondent to use its MP MILIPOL mark. Consequently, the Panel holds that Respondent is not commonly known by the <milipol.us> domain name according to Policy ¶ 4(c)(iii).
Policy ¶¶ 4(c)(ii) and (iv) allow a respondent to demonstrate rights and legitimate interests by proving that a respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have held that a respondent’s use of a disputed domain name to sell products that compete with the products that a complainant sells is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See LEGO Juris A/S v. Taylor, FA 1329723 (Nat. Arb. Forum July 15, 2010) (finding that the sale of products that compete with a complainant’s products is not a “a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv)”); see also Ashley Furniture Indus., Inc. v. Crespo, FA 1385846 (Nat. Arb. Forum June 1, 2011) (“The Panel finds that using a disputed domain name to operate a website that sells products in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv).”). Respondent’s <milipol.us> domain name resolves to a website that markets military and police equipment that competes with the equipment provided by Complainant. Respondent also includes a hyperlink to its eBay store. Based on this alleged commercial use, the Panel holds that Respondent has not demonstrated rights and legitimate interests under Policy ¶¶ 4(c)(ii) and (iv).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As Complainant notes, unlike a proceeding governed by the UDRP, the usTLD Policy allows the element of bad faith to be satisfied through proof of either bad faith registration or bad faith use. See American Univ. v. Naveh, FA 323759 (Nat. Arb. Forum Oct. 21, 2004) (“It is important to note in this connection that the usTLD Policy differs materially from the older UDRP Policy, among other ways, in that the standard of proof of bad faith in the former policy is stated in the disjunctive (“or”) while the standard of proof of bad faith in the latter is stated in the conjunctive (“and”). . . A complainant under the usTLD Policy, however, need only prove either that the disputed domain name has been registered in bad faith or that it is used in bad faith.”).
Complainant does not argue bad faith registration or use under Policy ¶ 4(b)(iii), which looks to whether a respondent’s use of a disputed domain name disrupts a complainant’s business. However, Complainant does assert that Respondent’s <milipol.us> domain name resolves to a website that market and sells military and police equipment that directly competes with the equipment sold by Complainant and its vendors. In cases involving similar sales of competing products, panels have maintained that such a use disrupts a complainant’s business and is evidence of both bad faith registration and bad faith use. See Roche Prods. Inc. v. xxxxx, FA 1356459 (Nat. Arb. Forum Dec. 30, 2010) (holding that the complainant’s “true purpose” in registering the disputed domain name was to divert Internet users to the respondent’s own website where competitor’s products are sold, which is evidence of both bad faith registration and use under Policy ¶ 4(b)(iii)); see also LEGO Juris A/S v. Taylor, FA 1329723 (Nat. Arb. Forum July 15, 2010) (“As the disputed domain name is therefore being used to promote and sell competitors’ products, side by side with Complainant, the Panel finds that Respondent’s disputed domain name disrupts Complainant’s business and evidences bad faith registration and use under Policy ¶ 4(b)(iii).”). As the Panel presumes that Respondent registered the disputed domain name for the purpose of hosting this competing website, the Panel finds that Respondent both registered and uses the <milipol.us> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant does contend that Respondent registered the <milipol.us> domain name for the purpose of attempting to attract Internet users to Respondent’s website by creating confusion as to Complainant’s affiliation with the disputed domain name. Complainant claims that Respondent is commercially benefiting from its sale of competing police and military equipment. Prior panels have found that, if a respondent registered and uses a disputed domain name for the purpose of attempting to create confusion in order to attract Internet users for commercial gain, the respondent has registered and used the disputed domain name in bad faith. See Project Mgmt. Inst., Inc. v. Song yuyu, FA 1338368 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use after determining that Internet users may become confused as to the complainant’s sponsorship of, or affiliation with, the disputed domain name and resolving website that featured competing products); see also Ashley Furniture Indus., Inc. v. Surinruk, FA 1400900 (Nat. Arb. Forum Sept. 1, 2011) (holding that the respondent’s sale of competing furniture products commercially benefited respondent and was “facilitated by the confusion created among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name and resolving website,” which evidenced bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel holds that Respondent’s registration and use of the disputed domain name are evidence of bad faith under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <milipol.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 7, 2011
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