national arbitration forum

 

DECISION

 

Menard, Inc. v. Reliable Recovery

Claim Number: FA1211001472839

PARTIES

Complainant is Menard, Inc. (“Complainant”), represented by Danielle I. Mattessich of Merchant & Gould P.C., Minnesota, USA.  Respondent is Reliable Recovery (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <menards.co>, registered with NETWORK SOLUTIONS INC.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2012; the National Arbitration Forum received payment on November 27, 2012.

 

On November 27, 2012, NETWORK SOLUTIONS INC. confirmed by e-mail to the National Arbitration Forum that the <menards.co> domain name is registered with NETWORK SOLUTIONS INC. and that Respondent is the current registrant of the name.  NETWORK SOLUTIONS INC. has verified that Respondent is bound by the NETWORK SOLUTIONS 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 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@menards.co.  Also on November 29, 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 December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 issues 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.

 

On January 4, 2013, Complainant submitted an agreement signed by the parties which provided for the transfer of the domain name by the Respondent to the Complainant. Since there has been no request to withdraw the complaint, pursuant to the National Arbitration Forum Supplemental Rule 12 (b), the Panel will issue a decision.  

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant, Menard, Inc., is a chain of home improvement stores in the Midwestern United States. Complainant has approximately 270 stores in 14 states. Complainant owns the domain <www.menards.com> and a number of other domains, which use the MENARDS mark as a root.
    2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MENARDS mark (e.g., Reg. No. 2,723,532, registered June 10, 2003).
    3. Respondent’s <menards.co> domain name is confusing similar to Complainant’s MENARDS mark as the root word in Respondent’s domain name, MENARDS, is identical in appearance, sound, and meaning to Complainant’s mark.
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                        i.   Respondent is not commonly known by the mark and has not received Complainant’s permission to use the mark.

                      ii.   Respondent’s use of the disputed domain name is to trick consumers into visiting its website to offer advertising links to competitors.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                        i.   Respondent is using the disputed domain name to divert traffic to Complainant’s competitors.

                      ii.   Respondent is using the disputed domain name to attract consumers to its website.

                    iii.   Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s rights in the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant, Menard, Inc., asserts that it is a chain of home improvement stores in the Midwestern United States. Complainant asserts that it has approximately 270 stores in 14 states. Complainant argues that it owns the domain <www.menards.com> and a number of other domains, which use the MENARDS mark as a root. Complainant contends that it owns and shows evidence of trademark registrations with the USPTO for the MENARDS mark (e.g., Reg. No. 2,723,532, registered June 10, 2003). The Panel finds that Complainant’s registration of the MENARDS mark with the USPTO is sufficient to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent’s <menards.co> domain name is confusing similar to Complainant’s MENARDS mark as the root word in Respondent’s domain name, MENARDS, is identical in appearance, sound, and meaning to Complainant’s mark. The Panel notes that Respondent’s <menards.co> domain name is identical to Complainant’s mark and merely adds the country-code top-level domain (“ccTLD”) “.co” to the end of Complainant’s mark. The Panel determines that the addition of a ccTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Accordingly, the Panel concludes that Respondent’s <menards.co> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).   

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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. Complainant satisfies its burden, and the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the mark and has not received Complainant’s permission to use the mark. The Panel notes that the WHOIS information identifies “Reliable Recovery” as the registrant of the disputed domain name. Complainant contends that Respondent does not provide additional evidence showing that it is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant asserts that Respondent’s use of the disputed domain name is to trick consumers into visiting its website to offer advertising links to competitors. Complainant contends that unsuspecting consumers attempting to visit Complainant’s website may inadvertently visit Respondent’s website and are likely to be confused upon arriving at Respondent’s website, which contains terms such as “Building Materials, Kitchen Cabinets, Interior Lighting, Windows and Doors, Bath Products and Home Décor,” which are associated with Complainant’s business. Complainant argues that Respondent is using the disputed domain name to divert Complainant’s web traffic to a search directory that contains advertisements that forward to Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name to list advertisements for Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Complainant has proven this element.

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is using the disputed domain name to divert traffic to Complainant’s competitors. Complainant argues that Respondent is intentionally attempting to attract Internet users to its website that should have reached Complainant’s website. Complainant asserts that Respondent lists advertisements for Complainant’s competitors on Respondent’s website. The Panel notes that Respondent’s disputed domain name resolves to a website featuring links to “Lowe’s” and “Home Depot,” both of which directly compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name to advertise websites that compete with Complainant shows bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant contends that Respondent is using the disputed domain name to attract consumers to its website. Complainant argues that Respondent has numerous commercial links on its website. The Panel notes that Respondent’s disputed domain name resolves to a website featuring links to “Lowe’s” and “Home Depot,” which are Complainant’s competitors. Complainant asserts that Respondent is using the domain name to attract consumers to its website who are searching for Complainant’s products. The Panel finds that Respondent’s use of the disputed domain name to attract consumers for which it presumably commercially benefits constitutes bad faith registration and use under 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).

 

Complainant argues that Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s rights in the mark. Complainant contends that Respondent had constructive knowledge of Complainant’s trademark rights based on Complainant’s trademark registrations with the USPTO. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."

 

Complainant has proven this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ORDERED that the <menards.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  January 7, 2013

 

 

 

 

 

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