Minicards Vennootschap Onder
Claim Number: FA0707001031703
Complainant is Minicards Vennootschap Onder Firma
represented by Deborah J. Peckham, of Kirkpatrick & Lockhart Preston Gates Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minicardsusa.com>, registered with Register.com, 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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2007.
On July 17, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <minicardsusa.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on August 13, 2007.
A timely Additional Submission from Complainant was received and determined to be complete on August 17, 2007.
A timely Additional Submission from Respondent was received and determined to be complete on August 22, 2007.
On August 22, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint is hereby submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (NAF) Supplemental Rules (Supp. Rules).
II. COMPLAINANT INFORMATION
Name: MinicardsVennootschap Onder Firma
Address: Frans Halsstraat 39
Name: Deborah J. Peckham, Esq.
Address: Kirkpatrick & Lockhart
State Street Financial Center
The Complainant chooses to have this dispute heard before a single-member administrative panel.
III. RESPONDENT INFORMATION
According to the Whois database at www.betterwhois.com, the registrar of <minicardsusa.com> is Register.com, and the registrant of this domain name is Moscow Studio c/o Tamer Malekames. Malekames is also known as Tamer Malek. Information about how to contact the registrant is stated as follows:
Address: AMERICOM.International. 941 ½ North 20 Street
IV. DISPUTED DOMAIN NAME
A. The following domain name is the subject of this Complaint: <minicardsusa.com> (the “Disputed Domain Name”)
This dispute is properly within the scope of the Uniform Policy for Domain Name Dispute Resolution (the “Policy”) and the Administrative Panel has jurisdiction to decide the dispute. The Registrar’s Master Services Agreement, pursuant to which the Disputed Domain Name was registered, incorporates the ICANN Policy. True and correct copies of the Master Services Agreement incorporating the ICANN Policy and the ICANN.
In addition, in accordance with the Policy, Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because:
a. The Disputed Domain Name is confusingly similar, if not identical, to a trademark in which the Complainant has rights, namely, MINICARDS.
b. The Respondent registered and is using the Disputed Domain Name in bad faith to profit from the Complainant’s goodwill.
c. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Since at least as early as May 2000, Complainant has been using the inherently distinctive mark MINICARDS ("Minicards Mark") in connection with a variety of goods and services, including for advertising and marketing of goods and services of others in different cities worldwide through Complainant’s website, and by other means ("Minicards Goods and Services"). Through Complainant’s website, among other things, customers can learn about Complainant’s goods and services and inquire about advertising opportunities in different cities.
Complainant owns a number of valid
and subsisting registrations for the MINICARDS Mark used in connection with the
Minicards Goods and Services, including, but not limited to European Union
Community Trade Mark Registration No. 3,606,456 and Danish Trademark
Registration No. VR 2003 03126. Complainant also has a trademark in
Long prior to the Respondent's
registration of the Disputed Domain Name, Complainant adopted, and has
continuously used since that adoption, the inherently distinctive MINICARDS
Mark for the Minicards Goods and Services described above, in
Complainant has invested substantial sums to advertise and promote the Minicards Goods and Services and the MINICARDS Mark all over the world. As a result of Complainant’s marketing efforts, substantial sales, and the resulting success of its Minicards Goods and Services, the MINICARDS Mark represents extraordinarily valuable goodwill owned by Complainant.
Since at least as early as October 27, 2002, long prior to the Respondent’s registration of the Disputed Domain Name, Complainant adopted, and has continuously used the <minicards.com> domain name to market, promote and sell Minicards Goods and Services around the world. Complainant’s website is and has been accessible to users globally since 2002.
One of the means by which Complainant promotes its MINICARDS Mark is through entering into agreements with individuals in different specific geographical regions. Under Complainant’s standard agreement, an independent contractor (“licensee”) is licensed to offer MINICARDS goods and services for sale within an assigned territory.
Respondent’s Registration and Use of the Disputed Domain Name
Respondent’s prior relationship with Complainant and his or its direct
knowledge of Complainant’s rights, Respondent registered the Disputed Domain
Name on or about September 3, 2006. This
Disputed Domain Name is identical or confusingly similar to Complainant’s MINICARDS
Mark, being comprised of Complainant’s MINICARDS Mark and the three letters “
2. The Disputed Domain Name refers to a website in which there are advertising and marketing media products and information that bear the same color scheme and mark, and similar graphical and textual layout and contents as the Complainant’s website.
3. On March 29, 2007, Complainant sent Respondent a letter requesting that Malek, among other things, cease and desist his infringing activities, and transfer the Disputed Domain Name to Complainant. Malek has refused to comply with Complainant’s demands.
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that, by the time of the complaint, it has rights in the mark to which the Respondent’s domain name is either confusingly similar or identical. As of December 1, 2003 and July 25, 2005, well before the filing of this complaint, the Complainant had registered the MINICARDS mark with the Danish Patent and Trademark Office, the Russian Patent and Trademark Bureau and the European Union Office of Harmonization for the Internal Market (“OHIM”), respectively. The Domain Name, <minicardsusa.com>, is confusingly similar to the Complainant’s MINICARDS Mark. See Kidman v. Zuccarini, D2000-1415 (WIPO Jan. 23, 2001) (a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”).
Under Paragraph 4(a)(i) of the Policy, the Disputed Domain Name in question
must be identical or confusingly similar to Complainant’s mark. In this case, the Domain Name is confusingly
similar. Respondent has merely appended
On or about September 3, 2006, long
after the Minicards Mark and the <minicards.com> website were used,
Respondent registered the Disputed Domain Name, <minicardsusa.com>. This Disputed Domain Name is confusingly
similar to Complainant’s MINICARDS Mark, being comprised of Complainant’s MINICARDS
Mark and the geographic indicator “
The Disputed Domain Name, <minicardsusa.com> is a
combination of Complainant’s MINICARDS mark and the geographic indicator “
There is ample evidence of Respondent’s bad faith in registering and using the <minicardsusa.com> domain name. Complainant’s MINICARDS Mark is well-known and distinctive. Long after Complainant's adoption and use of the MINICARDS Mark, Respondent began making unauthorized use of that mark by registering the Disputed Domain Name and adopting Complainant’s identical mark, style and trade dress. Malek’s agreement with Complainant shows that he had actual knowledge of Complainant’s rights in the MINICARDS Mark. In addition, because Complainant owns trademark registrations that were registered prior to the Respondent’s registration of the Disputed Domain Name, Malek and Respondent had at least constructive knowledge of Complainant’s rights in the MINICARDS Mark prior to registering the Disputed Domain Name. Respondent’s registration and use of <minicardsusa.com>, despite knowledge of Complainant’s rights is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., D2000-1551 (WIPO Feb. 4, 2001) (“active or constructive knowledge of complainant’s rights in trademarks is a factor supporting bad faith”).
The combination of (a) Respondent’s actual and constructive knowledge of Complainant’s prior rights, (b) the well-known nature of the MINICARDS Mark, and (c) the creation of a website bearing the Disputed Domain Name that offers goods and services competitive to those of Complainant with the intent to profit from customers mistaken belief of affiliation between Respondent and Complainant, sufficiently evidences bad faith registration and use of the Disputed Domain Name under ICANN Policy Paragraph 4(a)(iii).
Respondent has and continues to engage in bad faith behavior in violation of trademark law. This type of conduct is exactly what the Policy was designed to prevent, and Complainant asks the Administrative Panel to halt these violations and transfer the offending Domain Name to Complainant.
Respondent received a Notification
of Complaint and Commencement of Administrative Proceeding on
[a.] Name: Tamer Malekames
[b.] Address: 941 ½ North 20 Street
Complainant has apparently been
using the mark MINICARDS in several countries in
Furthermore, Complainant is not the
sole owner of the mark MINICARDS or domain names containing the word
“minicards” for use on or in connection with advertising related services. In addition to Complainant,
Respondent has identified numerous other apparently legitimate users or planned
users of the mark MINICARDS throughout the world by other than Respondent. Examples include
On September 3, 2006, almost
fifteen months after Respondent filed its application for federal registration
of the mark MINICARDS in the PTO, and well after Respondent had received word
from the PTO that no previously registered or pending marks that in the opinion
of the U.S. Trademark Examiner would conflict with Respondent’s use of
MINICARDS in the United States, Respondent applied to register the disputed
domain name <minicardsusa.com>. Thus, only after Respondent in good faith
took the proper steps to ensure that no confusingly similar marks were already
in use in the
In view of Respondent’s federal
trademark registration in the
Complainant asserts that Respondent lacks rights and legitimate interests in the domain name <minicardsusa.com> because Respondent is using the domain name to divert Internet users to its website that offers competing services to those of Complainant. Respondent, however, selected the domain name <minicardsusa.com> to make it clear that its business activities were confined to the United States, where Complainant did not have any reputation, presence, or business activities, with “USA” being used to distinguish its services from Complainant. Similarities in the color scheme of Respondent’s website and Complainant’s website resulted from the past partnership between the parties where concepts and ideas were freely shared and adopted, and the parties worked together in good faith.
Respondent was at all times in
compliance with the terms of the partnership agreement and in fact the business
was growing rapidly. Complainant has
presented no evidence to support the February 24, 2004 termination date. In truth, rather than terminating the agreement
according to its terms, Complainant, in an effort to subversively acquire
Respondent’s rightful property, caused Respondent to essentially be kidnapped
by the Russian militia in June 2006, and to be detained and then forcibly
In addition, the restriction on Respondent’s ability to use any know-how includes no limits on the duration of the restriction, or on the geographic scope of the restriction. Courts generally oppose restrictions that are overly broad in scope and could prevent an employee or independent contractor from earning a livelihood after employment has been terminated. Thus, such language is clearly unenforceable. Furthermore, in view of the manner in which the Agreement was “terminated,” whereby Respondent was unlawfully detained by the Russian militia and expelled from the country and prevented forever from making a living in his chosen field, the Agreement referred to is void on its face.
To prevent Respondent from being
able to register and use a domain name associated with legitimate trademark or
service mark rights would be a restraint on Respondent’s ability to conduct
business, and would be counter to the purposes of the present domain name
dispute resolution system. In addition,
transferring the domain name to Complainant would also unfairly enable
Complainant profit from the sweat and brow efforts of Respondent to establish
its business enterprise in the
C. Additional Submissions
Additional Statements of Respondent and Complainant were timely received and fully considered following Panel review. Said Statements did not influence Panel Decision.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant asserts rights in the MINICARDS mark through trademark
registrations with the European Union’s Office for Harmonization in the
Internal Market (“OHIM”) (Reg. No. 3,606,456 issued July 25, 2005) and with the
Danish Patent Office (“DPO”) (Reg. No. VR 2003 03126 issued September 15,
2003). The Panel finds that these trademark registrations
with governmental trademark authorities establish Complainant’s rights in the
MINICARDS mark under Policy ¶ 4(a)(i). See
The Panel finds
that the <minicardsusa.com> domain
name is confusingly similar to
Complainant’s MINICARDS mark under Policy ¶ 4(a)(i) as the disputed domain name
combines Complainant’s mark in its entirety with the addition of the geographic
identifier “USA” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither of these
modifications to Complainant’s mark sufficiently distinguish the disputed
domain name from Complainant’s mark under Policy ¶ 4(a)(i). See
JVC Ams. Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the
domain name registered by the respondent, <jvc-america.com>, is
substantially similar to, and nearly identical to the complainant's JVC mark); see also InfoSpace, Inc. v. domains
The Panel is aware that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that despite its previous contractual agreement with Respondent for promotion of its goods and services under its MINICARDS mark, Respondent has never been authorized to use Complainant’s mark in any domain name. Complainant further argues that Respondent’s USPTO service mark registration is invalid due to Complainant’s use of the mark. The Panel agrees, and finds that Respondent is not commonly known by the <minicardsusa.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant contends that Respondent is using the <minicardsusa.com> domain name to market goods and services in direct competition with Complainant. The Panel agrees, and finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Respondent is using the <minicardsusa.com> domain name to create a likelihood of confusion between the disputed domain name and Complainant’s affiliation with it and the corresponding website to market goods and services in direct competition with Complainant for Respondent’s benefit. Such a use may be deemed bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent’s use of the <minicardsusa.com> domain name to market goods and services in direct competition with those offered by Complainant may be deemed to be a disruption of Complainant’s business, and accordingly evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Moreover, Complainant contends, and Respondent admits, that Respondent previously had a contractual business agreement with Complainant concerning use of the MINICARDS mark, prior to the time in which Respondent registered the <minicardsusa.com> domain name. The Panel thus finds that Respondent had actual knowledge of Complainant’s mark when registering the disputed domain name, and find bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
In its Additional Submission, Complainant contends that Respondent’s use of a disclaimer on the website that resolves from the <minicardsusa.com> domain name does not sufficiently prevent confusion as to Complainant’s affiliation with the disputed domain name and corresponding website. The Panel agrees, and finds that the disclaimer does not prevent a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the 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 <minicardsusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: September 5, 2007
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