Melrose Pyrotechnics, Inc. v. Jeffrey Ott
Claim Number: FA1111001413985
Complainant is Melrose Pyrotechnics, Inc. (“Complainant”), represented by Jonathan Gesse, Indiana, USA. Respondent is Jeffrey Ott (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <melrosepyrotechnics.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 3, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <melrosepyrotechnics.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 November 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@melrosepyrotechnics.com. Also on November 3, 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 December 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <melrosepyrotechnics.com> domain name is confusingly similar to Complainant’s MELROSE PYROTECHNICS, INC. mark.
2. Respondent does not have any rights or legitimate interests in the <melrosepyrotechnics.com> domain name.
3. Respondent registered and used the <melrosepyrotechnics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Melrose Pyrotechnics, Inc., is a pyrotechnics entertainment firm that has been in business since 1990. Complainant registered its MELROSE PYROTECHNICS, INC. trademark with the United States Patent and Trademark Office (“USPTO”) on May 10, 2011 (Reg. No. 3,957,221 filed August 19, 2010; registered May 10, 2011). Complainant also asserts that it has common law rights in the mark dating back to its first use of the mark in connection with its business in November 1990.
Respondent, Jeffrey Ott, registered the <melrosepyrotechnics.com> domain name on September 6, 2009. The disputed domain name redirects Internet users to the <southeasternpyrotechnics.com> domain name, which hosts the website for Respondent’s competing pyrotechnics company, Southeastern Pyrotechnics. Respondent offered to sell the disputed domain name to Complainant.
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 owns a USPTO trademark registration for the MELROSE PYROTECHNICS, INC. mark (Reg. No. 3,957,221 filed August 19, 2010; registered May 20, 2011). Panels in Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), and Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), previously found that a USPTO trademark registration proves a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). In this case, the Panel finds in accordance with this precedent and concludes that Complainant has established rights its rights in the MELROSE PYROTECHNICS, INC. mark under Policy ¶ 4(a)(i). The Panel also finds that Complainant’s rights in the mark date back to August 19, 2010, the date the registration was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
In addition to its registered trademark rights, Complainant also asserts common law rights in the mark. Complainant alleges that it was founded in 1990 and has been continuously using the MELROSE PYROTECHNICS, INC. mark in connection with its business and services since November 18, 1990. The USPTO trademark registration for the mark also notes November 18, 1990 as the first-use-in-commerce date. Based on this evidence, and in light of the failure of Respondent to contradict Complainant’s contention of common law rights, the Panel determines that Complainant has also shown common law rights in the MELROSE PYROTECHNICS, INC. mark dating back to November 18, 1990. 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 Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s <melrosepyrotechnics.com> domain name is confusingly similar to Complainant’s MELROSE PYROTECHNICS, INC. mark because the disputed domain name is “derived directly” from the mark. The Panel finds that the only modifications to the mark are the deletion of the spaces between the terms, the comma, the final term “inc,” and the period and the addition of the generic top-level domain (“gTLD”) “.com.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that the removal of spaces and punctuation marks did not distinguish a disputed domain name. In Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001), the panel also found that the <wellness-international.com> domain name was confusingly similar to the WELLNESS INTERNATIONAL NETWORK mark despite the deletion of the term “network” from the mark. Finally, panels have repeatedly established that the addition of a gTLD has no effect on the confusingly similar analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel therefore finds that Respondent’s <melrosepyrotechnics.com> domain name is confusingly similar to Complainant’s MELROSE PYROTECHNICS, INC. mark pursuant to Policy ¶ 4(a)(i)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to first establish a prima facie case against Respondent before shifting the burden to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Complainant’s presentation of a prima facie case in these proceedings and Respondent’s subsequent failure to respond are sufficient for the Panel to conclude that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence in the record to determine whether Complainant has any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <melrosepyrotechnics.com> domain name identifies the registrant as “Jeffrey Ott,” which does not suggest any nominal association with the disputed domain name. The Panel finds that this failure of the WHOIS information to link Respondent with the disputed domain name is evidence both that Respondent is not commonly known by the disputed domain name and that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant contends that Respondent uses the <melrosepyrotechnics.com> domain name to redirect Internet users to its own commercial website at the <southeasternpyrotechnics.com> domain name. The Panel finds that using a confusingly similar domain name to redirect Internet users to Respondent’s competing website is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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)).
Complainant also argues that Respondent offered to sell the disputed domain name to Complainant for “a profit.” Complainant claims that Respondent would not specify the amount required for a sale, but Respondent did say that it needed to make a profit and would accept either a check, products (fireworks), or both. Complainant provides specific examples of Respondent’s conversation and offer to sell, including the following statements from Respondent: “I buy names like this all the time and I flip them, I am in the business to make a profit on these.”; “You could have this domain name right now for a price.”; “I would accept either a check or product or a combination of the two but I need to make a profit, this is America.”; and “The offer those guys made was not enough.” The Panel determines that Respondent’s offer to sell the disputed domain name is further evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <melrosepyrotechnics.com> domain name with the intention to sell it to Complainant for a profit. As evidence supporting this allegation, Complainant provides statements made by Respondent, such as described above. The Panel finds that these statements demonstrate an intention to sell the disputed domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs, which reveals bad faith registration and use under Policy ¶ 4(b)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant asserts that the <melrosepyrotechnics.com> domain name currently resolves to Respondent’s own business’ website located at the <southeasternpyrotechnics.com> domain name. As Respondent is a competitor of Complainant, offering similar services and products, Complainant argues that Respondent is using the disputed domain name to disrupt Complainant’s business and divert Complainant’s intending customers away from Complainant. The Panel concludes that these actions indicate bad faith registration and use as a competitor under Policy ¶ 4(b)(iii). See Surface Prod. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).”).
As stated above, Complainant alleges that Respondent’s <melrosepyrotechnics.com> domain name resolves to Respondent’s website for its own business, Southeastern Pyrotechnics. The Panel finds that Respondent likely registered the disputed domain name containing Complainant’s mark for the purpose of attracting consumers and creating confusion as to the source, sponsorship, or affiliation of the resolving website. As the resolving website is associated with, and promoting, Respondent’s competing business, Respondent profits from the increased exposure resulting from the consumers diverted from Complainant’s website through the disputed domain name. The Panel accordingly finds that Respondent’s efforts to use the disputed domain name to attract and confuse consumers for its own profit is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <melrosepyrotechnics.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 12, 2011
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