Murray Feiss Import LLC v. Registrant Registrant / Registrant
Claim Number: FA1202001432116
Complainant is Murray Feiss Import LLC (“Complainant”), represented by Gaspare G. Ruggirello of Derico & Associates, P.C., Illinois, USA. Respondent is Registrant Registrant / Registrant (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <murrayfeiss.com> and <murayfeiss.com>, registered with Moniker Online Services, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.
On March 1, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <murrayfeiss.com> and <murayfeiss.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 March 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@murrayfeiss.com and postmaster@murayfeiss.com. Also on March 6, 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 response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following submissions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the designing and distribution of lighting fixtures and decorative household items sold under the MURRAY FLEISS name and trademark.
2. Complainant has registered the MURRAY FEISS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,666,746 registered December 24, 2002).
3. Respondent registered the domain name <murrayfeiss.com> on January 17, 2003 and the domain name <murayfeiss.com> on May 3, 2005. The domain names are used to provide links to websites that offer competing goods to those offered by 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."
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.
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.”).
Complainant claims that it has established its rights in the MURRAY FEISS mark by registering it with the USPTO (e.g., Reg. No. 2,666,746 registered December 24, 2002) and the Panel agrees with that submission. Complainant submits in evidence multiple trademark certificates issued by the USPTO to support its claims, all of which the Panel finds support Complainant’s submissions under this provision. Therefore, the Panel determines that Complainant has established its rights in the MURRAY FEISS mark under Policy ¶ 4(a) (i). See 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 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).
Having established those trademark rights, the next question is whether the disputed domain names are identical or confusingly similar to the trademarks relied on. Complainant claims that Respondent’s <murayfeiss.com> domain name is confusingly similar to Complainant’s MURRAY FEISS mark because the domain name merely removes the letter “r” from the mark. Complainant also states that the addition of the generic top-level domain (“gTLD”) “.com” to the domain name fails to differentiate it from its MURRAY FEISS mark. The Panel concludes that Respondent’s <murayfeiss.com> domain name is confusingly similar to Complainant’s MURRAY FEISS mark under Policy ¶ 4(a)(i) as a minor spelling alteration such as removing a single letter from the mark cannot negate confusing similarity that otherwise exists, as in this case. See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also 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.”). Accordingly, the Panel finds that the <murayfeiss.com> domain name is confusingly similar to the MURRAY FEISS trademark.
With respect to Respondent’s <murrayfeiss.com> domain name, Complainant claims that it is identical to its MURRAY FEISS mark. Complainant states that the disputed domain name includes the entire mark while merely adding the gTLD “.com.” The Panel finds that Respondent’s <murrayfeiss.com> domain name is identical to its MURRAY FEISS mark pursuant to Policy ¶ 4(a) (i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case and it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MURRAY FEISS trademark and to use it in its domain names , without any change at all in one case and in the other case simply deleting a letter from the trademark;
(b) Respondent has then decided to use the domain names to lead to websites that offer goods that are in competition with those provided by Complainant and to do so clearly for money;
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant alleges that Respondent is not commonly known by the disputed domain names and points to the WHOIS information, which identifies the registrant of the disputed domain names as “Registrant Registrant/ Registrant” to supports its allegations. The Panel notes that Respondent has not offered any evidence to contradict Complainant. Based upon the record, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (i) and Respondent therefore cannot claim that it derives a right or legitimate interest in the domain names on that basis. See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record).
(e) Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. According to Complainant, the disputed domain names resolve to a website offering links to Complainant’s competitors in the light fixtures and home decor industry. Previous panels have concluded that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c) (iii).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Thus, the Panel determines that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii).
(f) Complainant asserts that Respondent’s typosquatting of the <murayfeiss.com> domain name further supports a finding that Respondent lacks rights or legitimate interests in the domain name. Previous panels have held that engaging in typosquatting indicates a lack of rights or legitimate interests in the typosquatted domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). Therefore, as the Panel finds that Respondent has engaged in typosquatting, it concludes that that finding also supports the conclusion that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they have also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant relies on Policy ¶ 4(b) (iii) and says that Respondent’s registration and use of the disputed domain names disrupt its business, indicating bad faith registration and use. Complainant states that Respondent’s disputed domain names resolve to a website offering links to its competitors. Internet users may arrive at Respondent’s website, click on one of the links offered, and enter a competing website. Once there, that Internet user may purchase goods from a competitor of Complainant when it actually intended to purchase goods from Complainant itself. As a result, the Panel concludes that Respondent’s registration and use of the disputed domain names disrupt Complainant’s business, demonstrating bad faith registration and use under 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Secondly, Complainant claims that within the meaning of Policy ¶ 4(b) (iv) Respondent registered and is using the disputed domain names for its own commercial gain, constituting bad faith registration and use. Complainant states that Respondent’s disputed domain names resolve to websites offering links to Complainant’s competitors. Complainant claims that Respondent presumably collects click-through fees for each Internet user it diverts to the linked websites. The Panel determines that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Thirdly, as mentioned earlier, Complainant states that Respondent engaged in typosquatting when it registered and began using the <murayfeiss.com> domain name. Previous panels have determined that typosquatting demonstrates bad faith under the UDRP. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Thus, as the Panel finds that Respondent has engaged in typosquatting, it utilizes that finding to support a determination that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a) (iii).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <murrayfeiss.com> and <murayfeiss.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 14, 2012
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