national arbitration forum

 

DECISION

 

Mosquitno, LLC v. ME Intl

Claim Number: FA1303001492107

PARTIES

Complainant is Mosquitno, LLC (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.  Respondent is ME Intl (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mosquitno.com>, registered with GoDaddy.com, LLC.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2013; the National Arbitration Forum received payment on March 28, 2013.

 

On March 29, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mosquitno.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@mosquitno.com.  Also on April 4, 2013, 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 May 1, 2013, 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 any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, Mosquitno, LLC, registered the domain name <mosquitnoband.com> to launch its Internet presence in connection with the promotion of its goods.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MOSQUITNO mark (Reg. No. 4,089,686, registered January 24, 2012).
    3. Respondent’s <mosquitno.com> domain name is virtually identical to Complainant’s service mark.
    4. Respondent has no rights or legitimate interests with respect to the disputed domain name.

                                          i.    Respondent has never used the domain name <mosquitno.com> for anything other than a monetizing parked domain name.

    1. Respondent registered and used the domain name in bad faith.

                                          i.    Respondent’s use of the domain name was initiated directly to disrupt the business of Complainant.

                                         ii.    Respondent has not used the domain name for an actual website, and is using Complainant’s registered trademark to direct traffic to its website for financial gain. 

    1. Respondent registered the domain name <mosquitno.com> on May 23, 2005.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

On November 7, 2009, Complainant, Mosquitno, LLC, registered the domain name <mosquitnoband.com> to launch its Internet presence in connection with the promotion of its insect repellants.  Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MOSQUITNO mark (Reg. No. 4,089,686, filed June 21, 2010, registered January 24, 2012).  The MOSQUITNO mark shows first use of October 15, 2009. 

Respondent, ME Intl, registered the domain name <mosquitno.com> on May 23, 2005.

 

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

 

As Complainant is the owner of trademark registration with the USPTO for the MOSQUITNO mark (Reg. No. 4,089,686, filed June 21, 2010, registered January 24, 2012), Complainant has rights in the mark under Policy ¶ 4(a)(i) effective June 21, 2010, the trademark application filing date. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Complainant asserts that Respondent’s <mosquitno.com> domain name is virtually identical to Complainant’s service mark. Respondent incorporates Complainant’s MOSQUITNO mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” Respondent’s addition of a gTLD does not distinguish Respondent’s domain name from Complainant’s mark. The disputed domain name is therefore identical to the MOSQUITNO mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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).

 

Complainant does not make any allegations with respect to Respondent’s rights or legitimate interests in the <mosquitno.com> domain name under Policy ¶ 4(c)(ii); however, the WHOIS information associated with the disputed domain name identifies “ME Intl” as the domain’s registrant. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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).

 

Complainant contends that Respondent has never used the domain name <mosquitno.com> for anything other than a monetizing parked domain name. Complainant asserts that Respondent registered and is using the domain name for the purpose of promoting confusion among users looking for Complainant’s services offered in connection with its marks and to draw attention to its website by misdirecting traffic in order to earn revenue through cash parking.  However, Respondent registered the <mosquitno.com> domain name on May 23, 2005, over four years before Complainant’s first use of the MOSQUITNO mark on October 15, 2009.    Therefore, Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent registered the <mosquitno.com> domain name on May 23, 2005.  Complainant’s first use of the MOSQUITNO mark was on October 15, 2009.   Complainant does not provide any evidence that would show Complainant made use of the MOSQUITNO mark prior to Respondent’s registration of the <mosquitno.com> domain name.  Therefore, the Panel cannot find that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

 

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <mosquitno.com> domain name REMAIN WITH Respondent.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  May 15, 2013

 

 

 

 

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