Masai Marketing & Trading AG v. Michael Kingsley
Claim Number: FA0905001264102
Complainant is Masai Marketing & Trading AG (“Complainant”), represented by Grace Han Stanton, of Perkins Coie LLP, Washington, USA. Respondent is Michael Kingsley (“Respondent”), Florida, USA
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mbtshoesdirect.com> and <mbtsandals.com>, registered with Godaddy.com, Inc.
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. Judge Karl V. Fink (ret), Judge Nelson A. Diaz (ret) Chair, and Mr. Terry F. Peppard as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2009.
On May 21, 2009 and June 4, 2009, respectively, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mbtshoesdirect.com> and <mbtsandals.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 June 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 30, 2009 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 postmaster@mbtshoesdirect.com and postmaster@mbtsandals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed . Judge Karl V. Fink (ret), Judge Nelson A. Diaz (ret), and Mr. Terry F. Peppard as Panelists.
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mbtshoesdirect.com> and <mbtsandals.com> domain names are confusingly similar to Complainant’s MBT mark.
2. Respondent does not have any rights or legitimate interests in the <mbtshoesdirect.com> and <mbtsandals.com> domain names.
3. Respondent registered and used the <mbtshoesdirect.com> and <mbtsandals.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Findings for the Complainant.
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."
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.”).
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.
Complainant has provided evidence of the registration of its MBT mark with the USPTO. The Panel finds that this evidence is sufficient to establish Complainant’s rights in its MBT mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <mbtshoesdirect.com> and <mbtsandals.com> domain
names contain Complainant’s MBT mark in its entirety with the addition of the
descriptive term “sandals” or the phrase “shoes direct” and the affixation of
the generic top-level domain “.com.” The
terms “sandals” and “shoes” are descriptive of Complainant’s business because
Complainant markets and sells footwear products. The term “direct” is merely a generic
term. The Panel finds that the addition
of descriptive terms fail to sufficiently distinguish Respondent’s disputed
domain names from Complainant’s MBT mark.
The Panel also finds that the addition of the term “direct” does not
create a notable distinction between Complainant’s MBT mark and Respondent’s <mbtshoesdirect.com>
domain name. The Panel concludes that
the addition of a generic top-level domain is insignificant for the purposes of
a Policy ¶ 4(a)(i) analysis. See Kohler
Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing
similarity where <kohlerbaths.com>,
the disputed domain name,
contained the complainant’s mark in its entirety adding “the descriptive term
‘baths,’ which is an obvious allusion to complainant’s business.”); see also Gen. Elec. Co. v. Forddirect.com,
Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term
“direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter
the underlying mark held by the complainant, and thus the respondent’s domain
names are confusingly similar); 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). Therefore, the Panel finds that Respondent’s <mbtshoesdirect.com> and <mbtsandals.com> domain
names are confusingly similar to Complainant’s MBT mark under Policy ¶
4(a)(i).
The Panel finds a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and therefore 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.”).
Furthermore, Complainant asserts that Respondent is not
commonly known by the disputed domain names.
The WHOIS information lists the registrant as “Michael Kingsley.” The Panel finds that this information, taken
together with the lack of other evidence in the record, suggests that
Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See
Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also 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
respondent was commonly known by the disputed domain name).
Respondent’s disputed domain names each resolve to a website containing click-through links which divert Internet users to websites of Complainant and Complainant’s competitors. The Panel presumes that Respondent is generating revenue from such use, and the Panel finds that Respondent has failed to make a bona fide offering of goods or service or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent’s use of confusingly similar domain names to divert Complainant’s customers to Respondent’s website, which contains links to Complainant’s competitors, presumably disrupts Complainant’s business The Panel finds that Respondent has engaged in 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 the complainant’s business); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant asserts that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv) because Respondent is using the
disputed domain names to resolve to websites containing click-through links,
which further resolve to the websites of Complainant and Complainant’s
competitors. The Panel concludes that
Respondent’s utilization of Complainant’s MBT mark is intended to attract
Internet users, and the Panel further infers that Respondent is profiting from
such use. Thus, the Panel finds that
Respondent has engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also 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.’”)
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mbtshoesdirect.com> and <mbtsandals.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Judge Nelson A. Diaz (ret) Chairman of the Panel
Dated: July 20, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum