MDM Products LLC v. Vincent Carrano / Direct Distribution, LLC
Claim Number: FA1201001424991
Complainant is MDM Products LLC (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Vincent Carrano / Direct Distribution, LLC (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2012; the National Arbitration Forum received payment on January 17, 2012.
On January 17, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domains names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2012 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@rhinoshelter.com, postmaster@myrhinoshelter.com, postmaster@rhinoshelterstore.com, and postmaster@rhinoshelter.net. Also on January 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2012, 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.
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 formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myrhinoshelter.com>, and <rhinoshelterstore.com> domain names are confusingly similar to Complainant’s RHINO SHELTER mark.
Respondent’s <rhinoshelter.com> and <rhinoshelter.net> domain names are identical to Complainant’s RHINO SHELTER mark.
2. Respondent does not have any rights or legitimate interests in the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domains names.
3. Respondent registered and used the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domains names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MDM Products LLC, uses its RHINO SHELTER mark in connection with protective fabric canopies and tents for storage of vehicles, industrial equipment, and machinery. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its RHINO SHELTER mark (Reg. 3,518,363 filed April 5, 2006; registered October 14, 2008).
Respondent, Vincent Carrano / Direct Distribution, LLC, registered the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domains names on February 6, 2008. The disputed domain names resolve to the <instantgaragesales.com> domain name that sells counterfeit versions of Complainant’s products and competitors’ products.
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 formal 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 trademark registration with the USPTO for its RHINO SHELTER mark (Reg. 3,518,363 filed April 5, 2006; registered October 14, 2008). The Panel finds that this trademark registration sufficiently demonstrates rights in the RHINO SHELTER mark under Policy ¶ 4(a)(i), dating back to the filing date of April 5, 2006. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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”).
Complainant argues that Respondent’s <myrhinoshelter.com> and <rhinoshelterstore.com> domain names are confusingly similar to Complainant’s RHINO SHELTER mark. The disputed domain names combine Complainant’s RHINO SHELTER mark, absent the space, with the generic term “my” or “store” and the generic top-level domain (“gTLD”) “.com.” As such additions do not adequately distinguish the disputed domain names from Complainant’s mark, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s RHINO SHELTER mark pursuant to Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also 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 Respondent’s <rhinoshelter.com> and <rhinoshelter.net> domain names are identical to Complainant’s RHINO SHELTER mark under Policy ¶ 4(a)(i) because Respondent only adds the gTLD “.com” to Complainant’s mark and removes the space in the 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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names. The WHOIS information identifies “Vincent Carrano / Direct Distribution, LLC” as the registrant of the disputed domain names. Complainant did not authorize Respondent to use Complainant’s RHINO SHELTER mark. Thus, the Panel finds that Respondent is not commonly known by the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent’s <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names resolve to the <instantgaragesales.com> domain name, which offers counterfeit versions of Complainant’s products and the products of Complainant’s competitors. The Panel determines that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant’s business is disrupted by Respondent’s registration and use of the disputed domain names because Respondent sells competing and counterfeit versions of Complainant’s products at the <instantgaragesales.com> domain name to which the disputed domain name redirects Internet users. Consequently, the Panel finds that Respondent registered and uses the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (finding that the selling of counterfeit versions of a complainant’s products disrupts a complainant’s business and is evidence of bad faith registration and use); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent commercially benefits from the sale of competing products and counterfeit versions of Complainant’s products. Respondent increases the likelihood of selling its products by registering the confusingly similar <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names and benefits from Internet users that believe Complainant is associated with the <instantgaragesales.com> domain name. Consequently, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (determining that a respondent’s selling of counterfeit products creates the likelihood of confusion as to a complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Complainant also contends that in light of the fame and notoriety of Complainant's RHINO SHELTER mark, it is inconceivable that Respondent could have registered the <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does find, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <rhinoshelter.com>, <myrhinoshelter.com>, <rhinoshelterstore.com>, and <rhinoshelter.net> domains names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 6, 2012
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