Makit Products, Inc. v. MAKITPRODUCTS.COM Privacy Protect
Claim Number: FA1211001473822
Complainant is Makit Products, Inc. (“Complainant”), represented by George R. Schultz, Texas, USA. Respondent is MAKITPRODUCTS.COM Privacy Protect (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makitproducts.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
The undersigned certifies that he has acted independently and impartially and to the best of his or 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 November 30, 2012; the National Arbitration Forum received payment on November 30, 2012. The Complaint was submitted in both Slovak and English.
On December 6, 2012, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <makitproducts.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com 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 17, 2012, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of January 7, 2013 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@makitproducts.com. Also on December 17, 2012, the Slovak language 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 January 11, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions.
1.Complainant operates in the industry of art project preservation, including the manufacture of dinnerware and drinkware that its customers produce. Complainant sells kits that allow customers to create custom dishware from the customer’s artwork.
2.Complainant has used the MAKIT mark since 1988 to designate its mail order services in connection with art project preservation kits. Complainant owns trademark registrations for its MAKIT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,709,573 registered April 22, 2003). See Exhibit 1.
3.Respondent registered the <makitproducts.com> domain name on December 16, 2005.
4. The disputed domain name is confusingly similar to Complainant’s MAKIT mark.
5. Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <makitproducts.com> domain name. The website resolving from the disputed domain name contains sponsored hyperlinks for competing websites in the dinnerware industry, which overlaps Complainant’s business. Respondent collects click-through fees by allowing competing businesses to sponsor hyperlinks at the resolving website and attracts Internet users by using a confusingly similar domain name.
6. Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating in the industry of art project preservation, including the manufacture of dinnerware and drinkware that its customers produce and related activities.
2. Complainant owns trademark registrations for its MAKIT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,709,573 registered April 22, 2003).
3. Respondent registered the <makitproducts.com> domain name on December 16, 2005. The domain name resolves to a website containing sponsored hyperlinks for competing websites in the dinnerware industry, which overlaps Complainant’s business.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Slovak, thereby making the language of the proceedings Slovak. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that its rights in the MAKIT mark originate from its USPTO trademark registration (e.g., Reg. No. 2,709,573 registered April 22, 2003). In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel held that the complainant had established rights in its mark through registration of the mark with the USPTO. The Panel determines that Complainant has rights in its MAKIT mark, as demonstrated by its trademark registration with the USPTO, for the purposes of Policy ¶ 4(a)(i). The Panel also finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in Respondent’s country of residence. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MAKIT mark. Complainant contends that the <makitproducts.com> domain name is likely to be confused with Complainant’s MAKIT mark because the <makitproducts.com> domain name matches Complainant’s corporate name and it merely adds the descriptive term “products” and the generic top-level domain (“gTLD”) “.com” to the MAKIT mark. The Panel determines that the <makitproducts.com> domain name is confusingly similar to Complainant’s MAKIT mark due to the addition of a descriptive term and a gTLD. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).
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 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. 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 that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MAKIT mark and to use it in its domain name, adding only the descriptive word “products”, which can only convey to the internet user that the domain name relates to the products of Complainant produced under its MAKIT mark and that the domain name will lead to a website dealing with the same subject, neither of which is true;
(b) Respondent has then used the domain name to link to a website containing sponsored hyperlinks for competing websites in the dinnerware industry, which overlaps Complainant’s business;
(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 <makitproducts.com> domain name, as the WHOIS information lists “MAKITPRODUCTS.COM Privacy Protect” as the registrant. Complainant argues that the registrant information does not suffice to demonstrate Respondent is commonly known by the disputed domain name, because the WHOIS information refers to the privacy protection company that registered the domain. Further, Complainant contends that Respondent has not been authorized to use the MAKIT mark in a domain name. The Panel therefore finds that Respondent is not commonly known by the <makitproducts.com> domain name and as a result, does not have rights or legitimate interests in the disputed domain name for the purposes of Policy ¶ 4(c)(ii);
(e) Complainant also submits that Respondent created a website to which the <makitproducts.com> domain name resolves that contains sponsored hyperlinks to websites with competing products, such as customized plates, which overlaps Complainant’s business which is not a use of the domain name in connection with a bona fide offering of goods or services. Complainant also submits that by collecting click-through fees from the hyperlinks’ sponsors, Respondent does not make a noncommercial or fair use of the domain name. The Panel concludes that by maintaining a website to offer hyperlinks to businesses whose goods overlap with Complainant’s business and generating revenue from the sponsoring websites, Respondent fails to demonstrate 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s use of the <makitproducts.com> domain name to redirect Internet users to third-party websites, some of which compete with Complainant, disrupts Complainant’s business and constitutes bad faith registration and use. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), held that the respondent utilized the disputed domain name to resolve to a website with links to third-party competitors of the complainant, which established the respondent’s bad faith. The Panel likewise finds that Complainant’s business suffers disruption as a result of Respondent’s use of competing third-party hyperlinks at the resolving website, and determines that such registration and use is evidence of bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered and uses the <makitproducts.com> domain name in bad faith, as shown by its use of the confusingly similar domain name to collect “click-through” fees by attracting Internet users to the website. Complainant provides Exhibits 3, 4, and 5 to demonstrate that the disputed domain name resolves to a website that displays hyperlinks to other websites, some of which are in direct competition with Complainant’s business. The Panel determines that Respondent’s registration and use of the <makitproducts.com> domain name is in bad faith under Policy ¶ (b)(iv) due to its use of the domain name to make a profit by confusing Internet users and exploiting Complainant’s mark to attract traffic to its website. 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.’”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MAKIT mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <makitproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 14, 2013
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