Milipol v. Milipol USA Inc.
Claim Number: FA1111001417792
Complainant is Milipol (“Complainant”), represented by Cynthia K. Stephenson of Posz Law Group, PLC, Virginia, USA. Respondent is Milipol USA Inc. (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milipolusa.com>, registered with Wild West Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On November 30, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <milipolusa.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@milipolusa.com. Also on December 1, 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 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
On January 13, 2012, an untimely response was purportedly submitted on behalf of Respondent.
Also, on January 13, Complainant submitted an additional submission challenging the submission as being (1) untimely, (2) without certification of accuracy, and (3) without supporting evidence. Complainant also offers rebuttal to the contentions in the Response.
PROCEDURAL ISSUE
The Panel concludes that the Response is deficient in that it is untimely, lacks the proper certification, and lacks any affirmative statement that the response was filed on behalf of the Respondent or authorized by Respondent. Therefore, the Panel will not consider the Response. The Panel will also not consider the rebuttal contentions from Complainant’s Additional Submission.
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 a proper response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <milipolusa.com> domain name is confusingly similar to Complainant’s MP MILIPOL mark.
2. Respondent does not have any rights or legitimate interests in the <milipolusa.com> domain name.
3. Respondent registered and used the <milipolusa.com> domain name in bad faith.
B. Respondent failed to submit a proper Response in this proceeding.
Complainant, Milipol, is the owner of the MP MILIPOL mark. Complainant uses its mark in connection with organizing trade shows and exhibitions on the subject of police equipment, civil and military security, and related services. The MP MILIPOL mark (Reg. No. 3,972,596 registered June 7, 2011) is registered with the United States Patent and Trademark Office (“USPTO”). In addition to registration with the USPTO, the MP MILIPOL mark (Reg. No. 2,30,551 registered August 2, 2005) has been registered with the United Kingdom Intellectual Property Office (“UKIPO”).
Respondent, Milipol USA Inc., registered the disputed domain name on August 2, 2011. The <milipolusa.com> domain name resolves to a parked website which contains links which compete with Complainant under such headings as “Trade Show Displays” and “Exhibit/Event Managers.”
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 proper 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 argues that it has rights in the MP MILIPOL mark. Complainant has provided the Panel with evidence of its registration of the MP MILIPOL mark (Reg. No. 3,972,596 registered June 7, 2011) with the USPTO. Complainant also provides evidence of the registration for the MP MILIPOL mark (Reg. No. 2,30,551 registered August 2, 2005) with the UKIPO. Given Complainant’s national trademark registrations for its mark, the Panel finds that Complainant has rights in the MP MILIPOL mark pursuant to Policy ¶ 4(a)(i). 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant also argues that the <milipolusa.com> domain name is confusingly similar to Complainant’s mark. Respondent makes the following changes to the mark within the disputed domain name: the deletion of the term “MP,” the addition of the geographic qualifier “usa,” and the addition of the generic top-level domain (“gTLD”) “.com.” Given that Responent left in the domain name the prominent part of Complainant’s mark, “MILIPOL,” of the MP MILIPOL mark, the Panel finds that the disputed domain name is not differentiated from Complainant’s mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel finds that the addition of the geographic term “usa” to the disputed domain name similarly fails to distinguish the disputed domain name from Complainant’s mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel finds also that the addition of a gTLD makes no difference when making a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this finding and thus shifting the burden to Respondent to dispute these claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”); see also 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)).
Complainant argues that Respondent is not commonly known by the disputed domain name and does not have trademark registrations that reflect the <milipolusa.com> domain name. The WHOIS record for the <milipolusa.com> domain name lists “Milipol USA Inc.” as the domain name registrant. Although this appears to show that Respondent is commonly known by the disputed domain name, the panels in Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), and City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004), found that a domain name registrant listing alone is not enough for a finding that the respondent is commonly known by a disputed domain name. The Panel thus finds that, without more, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), especially in view of the fact that the <milipolusa.com> domain name resolves to a parked website which contains links which compete with Complainant.
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have previously held that the use of a disputed domain name to resolve to a parked page displaying competitive links does not fall under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). The <milipolusa.com> domain name resolves to a website which is parked and displays links under headings such as “Free Public Records of Arrest” and “Trade Show Booth Packages” which compete with Complainant in the criminal justice and trade show industries. The Panel finds that Respondent’s display of competing links is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant asserts that the registration and use of the disputed domain name is a product of Respondent’s intent to disrupt the Complainant. Panels have found in, Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), that the use of a domain name to display hyperlinks to competing goods and services is a disruptive use. The <milipolusa.com> domain name was registered and is used by Respondent to display links to goods and services involving trade shows, civil and military security, police equipment, and related services—the industries which Complainant operates in. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent also registered and is using the <milipolusa.com> domain name in order to benefit from the confusion generated concerning the source or sponsorship of the disputed domain name. The <milipolusa.com> domain name is confusingly similar to Complainant’s MP MILIPOL mark. Additionally, the links on the <milipolusa.com> domain name’s resolving website are similar to services which Complainant provides. Internet users could assume that the similar make up of the domain name and its resolving website is an indication that Complainant, rather than Respondent, is the genuine source or sponsor of the <milipolusa.com> domain name. The Panel infers that Respondent profits from maintaining the disputed domain name, allowing the page to be parked, and from Internet users clicking through the links. As such, the Panel finds that Respondent’s bad faith is evident from the intent to profit from the registration and use of the <milipolusa.com> domain name pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <milipolusa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 24, 2012
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