Neal & Massy Holdings Limited v. Massy Nealand
Claim Number: FA1305001498038
Complainant is Neal & Massy Holdings Limited (“Complainant”), represented by Sheryl De Luca of Nixon & Vanderhye P.C., Virginia, USA. Respondent is Massy Nealand (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nealandmassy.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2013; the National Arbitration Forum received payment on May 3, 2013.
On May 5, 2013, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <nealandmassy.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 May 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@nealandmassy.com. Also on May 10, 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.
A timely Response was received and determined to be complete on May 10, 2013.
Complainant submitted an Additional Submission, which was received and found to be compliant and timely filed on May 15, 2013.
On May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s predecessor company was originally organized under the laws of Trinidad and Tobago on February 1, 1923 and known as Neal and Massy Engineering Company Limited. Complainant has used the NEAL & MASSY mark since January 23, 1933 in a variety of areas. It has since developed into and is known to be a Trinidad and Tobago-based diversified multinational conglomerate specifically focused on investment holding and capital asset management. For over 80 years Complainant has had a strong presence throughout the Caribbean and around the world through the incorporation of various subsidiaries.
Complainant has prominently used the NEAL & MASSY trade mark and trade name in its advertising materials, promotional materials, presentations and/or on packaging for its goods and/or services.
Complainant’s subsidiary registered the <neal-and-massy.com> domain name on March 14, 1995. The website at <neal-and-massy.com> is used to promote the NEAL & MASSY services and provide related information in the Caribbean, U.S. and South American countries since around 1995. Complainant, as a holding company, uses the mark in conjunction with its holding of business in a wide array of industries and business areas. As at year end 2012, Complainant’s business units included: automotive and industrial equipment, energy and industrial gases, integrated retail and distribution businesses, finance and insurance, information technology and communications, etc.
Complainant has invested a substantial amount of money in marketing and promoting the NEAL & MASSY mark in respect of its goods and services. Complainant submitted evidence that the following amounts were spent on marketing: $13.2 million in 2008; $12.4 million in 2009; $13.6 million in 2010; $14.7 million in 2011; and $17.2 million in 2012. Complainant has about 9,000 in its employ. Complainant is currently internally valued at $884 million. By virtue of Complainant’s prior use, including that of its predecessors, in advertising and in the sale of goods and services under the trade mark NEAL & MASSY, and its maintenance of high quality standards relating thereto, Complainant and its NEAL & MASSY mark are well known.
Complainant’s use of the trade mark and trade name NEAL & MASSY long precedes Respondent’s registration of the disputed domain name (on October 18, 2006) and its use of the disputed domain name on its website. Respondent appears to operate a website at <nealandmassy.com> which contains links to businesses operated by third parties offering various goods and services associated with, inter alia, automobiles, the money transfer industry, properties, communications, finance, and distribution. The subject matter of the website is in the same field as Complainant’s goods and services and there is thus a strong risk that the links on Respondent’s website could mislead consumers into believing that the site is the Complainant’s official site or authorized by it and connected with its business. Respondent’s offering on her website is not bona fide nor is it a bona fide offering of goods and services, nor a legitimate non-commercial or fair use. Respondent could have chosen to offer her goods and services through a website URL that did not incorporate Complainant’s NEAL & MASSY mark.
It is inconceivable that Respondent did not know of Complainant’s existence and reputation at the time she registered the disputed domain name since Complainant has been involved in numerous industries since the 1930s in the Caribbean and elsewhere. Respondent’s purpose in registering the disputed domain name must have been either to disrupt Complainant’s business or divert traffic for her own gain.
B. Respondent
Respondent did not file a formal response but stated in an email that:
(i) he is using the disputed domain name and needs it for email purposes;
(ii) he does not have a website and the website to which the disputed domain name resolves is not his but a default one set up by the hosting company;
(iii) he does not know the Complainant.
C. Additional Submissions
Complainant reiterated its initial arguments and noted that in Respondent’s response, she did not dispute Complainant’s prior rights to the trade mark NEAL & MASSY for its products and services in the various fields, nor the similarity between the said trade mark and the disputed domain name. Further, Respondent did not provide sufficient evidence of any rights to, and legitimate interests in the disputed domain name. Complainant added that Respondent’s argument that the disputed domain name content is beyond her control is not supportable as she is ultimately accountable for the content of the website.
(a) The disputed domain name is identical to the NEAL & MASSY trade mark in which Complainant has rights.
(b) The Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and used in bad faith.
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.
The Panel notes that Complainant did not furnish any evidence of a trademark registration in respect of the NEAL & MASSY mark. Nevertheless, the Policy does not mandate a registration of the relevant trade mark in order for a complainant to succeed in its claim. All that is required is for Complainant to establish that it has rights in the NEAL & MASSY mark which, in this case, Panel finds that it has; and for the disputed domain name to be shown to be identical or confusingly similar to the NEAL & MASSY trade mark.
The only difference between the domain name <nealandmassy.com> and the NEAL & MASSY trade mark is the substitution of the word “and” for the ampersand “&”, and the existence of the generic TLD “.com”. In view of the fact that the ampersand symbol is synonymous with “and” is not reproducible in a URL, and it is a well-established principle that the applicable top-level suffix in a domain name should be disregarded when considering the issue of confusing similarity since it is a technical requirement of registration, Panel finds that the disputed domain name is, in essence, identical to the NEAL & MASSY trade mark in which Complainant has rights.
The Panel therefore finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant is obliged under the Policy to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once a prima facie case is shown, the burden of proof shifts to Respondent who must demonstrate her rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; AOL LLC v. Gerberg, FA 780200 (NAt. Arb. Forum Sept. 26, 2006).
In Panel’s opinion, Complainant has demonstrated a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name: Complainant has never licensed nor authorized Respondent’s use of the NEAL & MASSY trade mark nor authorized the contents of Respondent’s website; Respondent is not known by the name Neal & Massy (nor Nealand Massy/Massy Nealand); Complainant’s use of the trade name and trade mark NEAL & MASSY long precedes the date of Respondent’s domain name registration. On the face of the evidence, the NEAL & MASSY trade name and trade mark appear to be very well established and famous.
As a prima facie case has been established, the question therefore turns on whether Respondent has been able to establish evidence of her rights or legitimate interests in the disputed domain name.
The Panel notes Complainant’s additional submissions and agrees that Respondent could have done more and provided evidence in support of her claim to the disputed domain name. Whilst Respondent’s name in the WhoIs records appears to be Massy Nealand, no evidence was furnished by Respondent to prove this to be the case, and there is no unequivocal statement or assertion by Respondent that she is using her name and that she therefore has basis for claiming a right or legitimate interest in the disputed domain name. There was only a statement that she needs and is using the domain name for e-mail. Panel does not consider this statement alone to be sufficient to demonstrate rights or legitimate interests in the disputed domain name. Respondent was in a position easily to show that she bears that name and that there was a basis for a claim to the disputed domain name. However, no evidence was put forward and in light of the established fame and reputation associated with the trade name and trade mark NEAL & MASSY, Panel has no basis upon which to find for Respondent. Respondent failed to demonstrate her rights or legitimate interests in the disputed domain name and therefore finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent’s domain name is holding the disputed domain name passively. It resolves to a parking website where a list of hyperlinks that, if clicked by Internet users, redirect them to other websites, some of which are competing in nature to the business of Complainant. The question therefore is whether such use and the surrounding circumstances demonstrate bad faith registration and use use. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview”) reflects the consensus view of panelists, inter alia, that “examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).” See WIPO Overview, at ¶ 3.2.
The Panel agrees with the general view held in many UDRP decisions that the passive holding of a domain name that incorporates a well-known trade mark, without any obvious use by the respondent, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Given the reputation of Complainant’s NEAL & MASSY trade name and trade mark, it is not conceivable that Respondent was unaware of Complainant’s mark prior to registering the disputed domain name. A contrary view might have been arrived at if, for instance, Respondent had proven with evidence that regardless of the reputation of Complainant and its mark, her name is indeed Massy Nealand. The incorporation of Complainant’s well-known trade mark into the disputed domain name by Respondent having no plausible explanation for doing so, is in and of itself, an indication of bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087). In the absence of any legitimacy and valid explanation of Respondent’s choice of the specific name “nealandmassy” in the domain name, Panel believes it may reasonably be concluded in the light of what is usual in Internet commerce, that in the “pay per click” business model, the owner of the owner of the website or the host or both, would likely gain financially from advertisers who receive the referrals. Whilst there is nothing inherently wrong with this business model which is widely used, Panel finds that where the domain name concerned incorporates someone else’s trade mark without the trademark owner’s consent, the purpose of which is to attract Internet visitors, then those visitors may be confused and misled into thinking that the website is the complainant’s or somehow linked to or endorsed by the complainant. Even if the confusion only occurs at the initial stage, and whether or not the advertising commission accrues directly to the registrant or to the host, or to both, is immaterial. The Panel agrees with Complainant’s submission that the fact that the website was not set up by Respondent or that she had no knowledge of its contents is immaterial and does not go against a finding of bad faith. See illeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 wherein the Panel held that:
“[…] these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.)”.
On the evidence submitted, Panel finds that the of this circumstances of this case fall within paragraph 4(b)(iv) of the Policy, and constitute registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nealandmassy.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Tan, Panelist
Dated: May 24, 2013
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