Menard, Inc. v. Pham Dinh Nhut
Claim Number: FA1511001645753
Complainant is Menard, Inc. (“Complainant”), Wisconsin, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <menardsblackfriday.com>, registered with April Sea Information Technology Company Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2015; the Forum received payment on November 9, 2015.
On November 12, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <menardsblackfriday.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 November 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@menardsblackfriday.com. Also on November 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the MENARDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,549, registered on July 15, 1997). Respondent’s <menardsblackfriday.com> domain name is confusingly similar to the MENARDS mark because it contains the entire mark, with the additional descriptive phrase “black friday” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the <menardsblackfriday.com> domain name, because the available WHOIS information lists “Pham Dinh Nhut” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <menardsblackfriday.com> domain name resolves to a website hosting links to competitors of Complainant in order to profit through referral fees.
iii) Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions against it. Respondent uses the <menardsblackfriday.com> domain name in bad faith because the resolving website is used to host links to competitors of Complainant which provide click-through fees. Respondent registered the <menardsblackfriday.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the MENARDS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <menardsblackfriday.com> domain name was created on November 21, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of Proceeding
The Panel notes that Complainant makes requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English especially in the absence of Response.
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 claims it has rights in the MENARDS mark through its registration with the USPTO (e.g., Reg. No. 2,078,549, registered on July 15, 1997). Complainant has provided its USPTO registrations. Accordingly, the Panel finds that Complainant has rights in the MENARDS mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that Respondent’s <menardsblackfriday.com> domain name is confusingly similar to Complainant’s MENARDS mark because it contains the entire mark, along with the phrase “black friday” and the gTLD “.com.” Complainant urges that the phrase “black friday” is descriptive because it refers to an annual commercial retail event in which Complainant participates. As the Panel finds that “black friday” is descriptive of Complainant’s use of the MENARDS mark, it finds that Respondent’s <menardsblackfriday.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
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); 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.”).
Complainant alleges that Respondent is not commonly known by the <menardsblackfriday.com> domain name, because the available WHOIS information lists “Pham Dinh Nhut” as Registrant. Moreover, Complainant contends to have not entered into a licensing agreement with Respondent such that Respondent would be authorized to use the MENARDS mark. Consequently, the Panel finds that Respondent is not known by the <menardsblackfriday.com> domain name 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <menardsblackfriday.com> domain name resolves to a website hosting links to competitors of Complainant to profit through referral fees. Complainant has provided screenshots of the website in Exhibits 24-29, displaying links such as “Home Depot Appliances Sale,” “Best Buy Appliances Sale,” “Big Lots Black Friday AD,” and “Karl’s TV & Appliance.” Complainant urges that it is likely that Respondent profits from hosting these links through pay-per-click fees. As the Panel finds Complainant’s evidence sufficient, it finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant alleges that Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions against it. Complainant has provided a list of 38 UDRP decisions in which Respondent was named as a Respondent, and notes that the domains at issue were transferred in 35 of these proceedings. Accordingly, the Panel finds that Respondent has demonstrated a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See 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).”).
Complainant argues that Respondent uses the <menardsblackfriday.com> domain name in bad faith because the resolving website is used to host links to competitors of Complainant, which constitutes a disruptive use under Policy ¶ 4(b)(iii). Complainant has provided screenshots of the website displaying links such as “Home Depot Appliances Sale,” “Best Buy Appliances Sale,” “Big Lots Black Friday AD,” and “Karl’s TV & Appliance.” As the Panel finds this evidence sufficient, it finds that Respondent uses the <menardsblackfriday.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent uses the <menardsblackfriday.com> domain name in bad faith because the resolving website is used to profit through the hosting of links to competitors of Complainant. Complainant has provided screenshots of the website displaying links such as “Home Depot Appliances Sale,” “Best Buy Appliances Sale,” “Big Lots Black Friday AD,” and “Karl’s TV & Appliance.” Complainant urges that it is likely that Respondent receives referral fees when these links are clicked. The Panel finds this argument compelling, and thus it finds that Respondent uses the <menardsblackfriday.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv). See 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 claims that Respondent registered the <menardsblackfriday.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the mark. Complainant argues that because of how well known the MENARDS mark is, and because of the manner in which Respondent has used the resolving website, Respondent is likely to have had actual knowledge. The Panel infers from the notoriety of the Complainant’s mark and the use manner of the disputed domain name by Respondent that Respondent registered the disputed domain name with actual knowledge of the Complainant’s mark. Therefore, the Panel finds that Respondent registered the <menardsblackfriday.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menardsblackfriday.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 26, 2015
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