Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP
Claim Number: FA1412001596702
Complainant is Molson Canada 2005 (“Complainant”), represented by Barry Hutsel of Macera & Jarzyna, LLP, Ontario, Canada. Respondent is JEAN LUCAS / DOMCHARME GROUP (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com>, registered with eNom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2014; the National Arbitration Forum received payment on December 23, 2014.
On December 24, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@molsoncenter.com, postmaster@molsoncentre.com, and postmaster@centremolson.com. Also on December 31, 2014, 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 January 27, 2015, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the MOLSON mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 672,613, registered Jan. 13, 1959) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 237,768, registered November 30, 1979). Complainant uses the MOLSON mark in connection with brewed alcoholic beverages and a wide variety of clothing items, promotional goods, and entertainment services. The <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names encompass the Complainant’s mark and add the generic or descriptive terms “center” and “centre” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names. Respondent is not know by the domain names and has never been licensed to use MOLSON in domain names. Further, the domain name actually resolves to a website in which a hyperlink appears that, once clicked, sends Internet users to a website containing adult-oriented material. Respondent, presumably, is operating a pay-per-click website. Complainant also contends that Respondent cannot possibly have rights in the disputed domain names as the MOLSON mark is famous.
Respondent has registered and is using the <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names in bad faith. First, the domain names were registered after Complainant’s mark had been registered with the USPTO and become famous so as to give Respondent notice that the registered domain name would violate Complainant’s rights. Second, Respondent interferes with Complainant’s business by sending users to a website containing adult-oriented material. Third, Complainant asserts that Respondent has prevented the use of the MOLSON mark in domain names and that Respondent has engaged in a pattern of such conduct.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Molson Canada 2005, has registered the MOLSON mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 672,613, registered Jan. 13, 1959) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 237,768, registered November 30, 1979). Complainant uses the MOLSON mark in connection with brewed alcoholic beverages and a wide variety of clothing items, promotional goods, and entertainment services.
Respondent, JEAN LUCAS / DOMCHARME GROUP, registered <molsoncenter.com> on July 28, 1998; <molsoncentre.com>, on August 8, 1999; and <centremolson.com> on August 30, 1999. The domain names resolve to a website with a hyperlink that sends Internet users to a website containing adult-oriented material.
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.”).
Complainant has rights in the MOLSON mark under Policy ¶ 4(a)(i) through registration with the USPTO and CIPO. See, e.g., Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Respondent’s <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names contain the MOLSON mark and add the term “center” or “centre” along with the gTLD “.com.” The addition of the descriptive terms heightens the confusing similarity between the disputed domain names and the MOLSON mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Thus, the Panel finds that the disputed domain names are confusingly similar to the MOLSON mark under Policy ¶ 4(a)(i).
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).
Respondent
is not commonly known by the <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com>
domain names under Policy ¶ 4(c)(ii). Complainant has not licensed
Respondent to use the MOLSON mark. The WHOIS information shows that “Jean
Lucas” is listed as the registrant of record for all the disputed domain names.
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb.
21, 2007) (concluding that respondent has no rights or legitimate interests in
a disputed domain name where there was no evidence in the record indicating
that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent operates a pay-per-click site where he presumably receives income—derived from the link appearing on the resolving website—each time an Internet users “clicks” on the link. The websites resolving from the disputed domain names have a hyperlink containing the MOLSON mark. Respondent’s use of the disputed domain names 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names resolve to websites with hyperlinks to an adult-oriented site. Such use is not 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 Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)).
Respondent has registered three domain names incorporating with Complainant’s MOLSON mark. Further, Respondent was found to have registered and used domain names in bad faith in seven prior UDRP cases. See, e.g., Kohl’s Illinois, Inc. v. Domcharme Group / Jean Lucas / lohls.com / Elias Skander, FA 1469349 (Nat. Arb. Form Dec. 28, 2012); Liberty Procurement Co. Inc. formerly known as Bed Bath & Beyond Procurement Co. Inc. v. Domcharme Group / Jean Lucas, FA 1481719 (Nat. Arb. Form Feb. 26, 2013). The Panel concludes that Respondent’s history of bad faith, as demonstrated by prior UDRP proceedings, in concert with Respondent’s registration of three domain names incorporating the MOLSON mark, constitutes a pattern of bad faith under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii));see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent, through its registration and use of the <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names, is intending to profit from a likelihood of confusion with the MOLSON mark. Respondent’s conduct is bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Also, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
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 <molsoncenter.com>, <molsoncentre.com>, and <centremolson.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 10, 2015
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