MG Icon LLC v. DNS MANAGER / HTTP GROUP
Claim Number: FA1511001649222
Complainant is MG Icon LLC (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio. Respondent is DNS MANAGER / HTTP GROUP (“Respondent”), Delaware.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <materialgirl.com>, registered with eNom, Inc.
The undersigned certify they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, and G. Gervaise Davis III as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2015; the Forum received payment on November 20, 2015.
On November 23, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <materialgirl.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@materialgirl.com. Also on November 24, 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.
A timely Response was received and determined to be complete on December 11, 2015.
An Additional Submission was received from Complainant and determined to be complete on December 16, 2015.
An Additional Submission was received from Respondent and determined to be complete on December 17, 2015.
On December 22, 2015, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, and G. Gervaise Davis III as Panelists, and Richard Hill as Presiding 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a joint venture between the singer Madonna and a company formed in 2009; and that Madonna is the original “Material Girl.” She released the song "Material Girl" in 1984 as part of her album entitled Like a Virgin. The song reached number 2 on the Billboard chart in 1985 and is well known. Madonna has since been known as the "Material Girl", and that phrase has been uniquely associated with her and her performances.
Complainant states that, in 2010, it launched the Material Girl brand. That brand, which was created along with Madonna's daughter, Lourdes, targets girls and young women between the ages of 16 and 24, and emphasizes the association between Madonna and the Material Girl mark as a 1980s-inspired clothing line.
Complainant states that it has rights in the MATERIAL GIRL mark through its registrations with the United States Patent and Trademark Office and the Office for Harmonization in the Internal Market in, respectively, 2010 and 2005. The registrations were filed in, respectively, 2005 and 2004. The European registration is for clothing, jewelry, and other categories; the US registration is for personal care products (shampoos, etc.) and for nutritional health supplements. Complainant has registered other marks subsequently, including in the US in 2010 for clothing. Complainant also has common law rights in the mark dating back to 1984. The disputed domain name was first registered in 1998; it was registered by the Respondent in 2008. According to Complainant, the disputed domain name is identical to its mark. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent is not commonly known by disputed domain name because there is no evidence on the record to suggest as much and because Respondent has not been given permission to use the MATERIAL GIRL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving webpage contains pay-per-click links to competitors of Complainant and Respondent has failed to show that the terms of the mark are generic. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent uses the disputed domain name in bad faith because it resolves to a website that hosts pay-per-click links to competitors of Complainant in order to disrupt Complainant’s business by taking advantage of the confusion of Internet users. Respondent registered the disputed domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the MATERIAL GIRL mark and because Respondent has failed to show that registration of the domain predated Complainant’s rights. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent states that this proceeding involves a term which is demonstrably descriptive and not exclusive to Complainant. As will be detailed below, the dispute domain name, registered by Respondent two (2) calendar years prior to Complainant launching its brand, incorporates a common descriptive term for a specific type of girl, widely used by the public in its descriptive sense. Respondent’s use of the disputed domain name in connection with providing primarily clothing-related advertising is consistent with the primary connotations of the non-distinctive term at issue.
Respondent does not contest that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent alleges, however, that any alleged rights that third party Madonna may have in the “material girl” term are irrelevant to this Proceeding and, even if any alleged rights were relevant, Complainant has not submitted any documentation that evidences that Madonna ever used the “material girl” term as a trademark and acquired common law or unregistered trademark rights as a result of her alleged use thereof. Further, even if Madonna were to have such common law rights, there is no evidence provided that such rights have been assigned to Complainant.
Respondent states that it registers generic, descriptive, and otherwise non-infringing domain names for the purpose of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information. Its use of the disputed domain name, to provide links to sellers of clothing, is legitimate because it reflects the generic nature of the terms that compose the domain name.
Respondent states: “Complainant acknowledges that a ‘material girl’ is a specific type of girl (and more specifically, in Complainant’s mind, a girl who is (1) spontaneous and fearless; (2) a trendsetter who invents her own styles and is never afraid to make a bold, creative statement; and (3) inspired by her eclectic taste in music, dance, and celebrities).”
Thus, according to Respondent, the term “material girl” is descriptive. The sole reason Respondent registered the disputed domain name is because of its incorporation of the demonstrably descriptive and non-exclusive term “material girl.” Respondent provides documentation to support its allegation that the term “material girl” refers to the type of girl described above. It also provides references that indicate that the term can be used to refer to a materialistic person; or to a person who loves to wear and show off expensive clothing items or accessories; or to a person who is driven by consumer culture: a culture which demands the consumption not only of the goods available in it, but also the mass-produced images which are its currency.
Respondent cites UDRP precedents to support its position that providing click-through advertising can constitute a legitimate use of a domain name consisting of generic, descriptive terms.
Further, says Respondent, its use of the disputed domain name, to provide links to sellers of clothing, is not done in bad faith because it is motivated by the generic meaning of the words that compose the domain name. Respondent did not acquire the disputed domain name in bad faith because acquisition was done without actual or constructive knowledge of Complainant’s rights, as it predated all United States registrations of the MATERIAL GIRL mark. Respondent cites UDRP precedents to support its position.
Moreover, Respondent states that it used the disputed domain name in connection with a click-through service for over seven and a half (7.5) years, without complaint from Complainant. While this long delay should bar the Complaint under the doctrine as laches, it also raises the strong inference that Complainant did not truly believe Respondent engaged in bad faith registration. Respondent cites UDRP precedents to support its position. In particular, it cites precedents regarding the doctrine of laches.
Respondent requests that the Panel issue a decision of Reverse Domain Name Hijacking because Complainant knew or should have known, when it filed the Complaint, that it could not prove at least one of the elements of the Policy, and filed its Complaint to hijack the disputed domain name from its rightful owner.
Specifically, Respondent notes that, in its Complaint, Complainant states “Respondent clearly knew of the Material Girl Marks and brand at the time it obtained the transfer of the MATERIALGIRL.COM domain name as there is no reason for it to select that name.” First, Respondent notes that given that Respondent acquired the disputed domain name two (2) calendar years prior to Complainant launching its brand, it is impossible that Respondent “clearly knew of the Material Girl…brand at the time it obtained the transfer of the MATERIALGIRL.COM domain name.” Second, while Complainant argues that “Respondent clearly knew of the Material Girl Marks…at the time it obtained the transfer of the MATERIALGIRL.COM domain name,” Complainant offers no facts, evidence, or case support that Respondent “clearly knew of the Material Girl Marks,” let alone had constructive knowledge of such marks, at the time Respondent registered the Domain Name. And third, with respect to Complainant’s argument that “there is no reason for [Respondent] to select [the Domain Name],” Respondent acts as if it has the exclusive, universal rights to the descriptive term “material girl.” Quite to the contrary, Respondent has submitted evidence of use of the term by numerous others, in the descriptive sense and in both trademarks and domain names, indicating that Complainant enjoys far less than a single, universal recognition. There certainly was a reason for Respondent to select the disputed domain name: “material girl” is a common descriptive term for a specific type of girl, and Respondent is in the business of registering generic, descriptive, and otherwise non-infringing domain names for the purpose of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information. And given the descriptive nature of the “material girl” term, there are countless other reasons for other Internet users to register a domain name incorporating “material girl.”
Further, says Respondent, Complainant writes: “Whatever Respondent’s intent in registering the domain name, Respondent’s actions have disrupted Complainant’s business.” While Respondent contests the argument that “Respondent’s actions have disrupted Complainant’s business” given that Respondent waited nearly six (6) years to notify Respondent of Complainant’s objection to Respondent’s registration and use of the disputed domain name, “disrupted Complainant’s business” is not the standard at issue: the standard at issue is whether Respondent has registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Complainant, as a sophisticated entity, either knew or should have known that Respondent’s intent in registering the disputed domain name is of the utmost importance to the question of whether the disputed domain name was registered in bad faith by Respondent. As such, the Panel should find Complainant’s blatant disregard of the importance of Respondent’s intent in registering the Domain Name as a basis for issuing a decision of Reverse Domain Name Hijacking.
Furthermore, says Respondent, Complainant’s delay of nearly six (6) years in bringing this action further supports a decision of Reverse Domain Name Hijacking.
Respondent cites UDRP precedents to support its position regarding Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant notes that Respondent does not contest that the disputed domain name is identical to the mark MATERIAL GIRL and reiterates that Madonna has common law rights in that mark.
Complainant alleges that the term “Material Girls” is not a descriptive or even generic term.
Further, says Complainant, there is no reasonable connection between the domain name and the use by the Respondent. There is no indication in the links on the webpage at the disputed domain name that those links relate in any way to a "Material Girl". Respondent is using the domain name as a trademark.
Respondent
In its Additional Submission, Respondent reiterates that any alleged rights that third party Madonna may have in the “material girl” term are irrelevant to this Proceeding and, even if any alleged rights were relevant, Complainant has not submitted any documentation that evidences that Madonna ever used the “material girl” term as a trademark and acquired common law or unregistered trademark rights as a result of her alleged use thereof.
Respondent also reiterates that even if Complainant had successfully shown that third party Madonna acquired common law or unregistered trademark rights in the “material girl” term (and particularly, with respect to clothing), Complainant has not submitted any documentation that evidences that third party Madonna assigned such alleged common law or unregistered trademark rights to Complainant.
Respondent states that, having carefully reviewed the records, it determined that it actually registered the disputed domain name on September 17, 2007.
Respondent alleges that Complainant’s long delay in challenging the registration of the disputed domain name (i) raises the strong inference that Complainant did not truly believe Respondent engaged in bad faith registration, and (ii) the Complaint should be barred under the doctrine of laches.
Respondent states that the Response provides numerous examples evidencing the descriptive nature of the “material girl” term. Complainant makes no arguments that successfully rebut the descriptive nature of the “material girl” term. In the Response, Respondent adequately demonstrates that a common trend of Complainant’s definition of “material girl,” as well as other definitions, including those cited in the Response, is clothing. Thus, Complainant has failed to show that Respondent’s use of the Domain Name in connection with providing primarily clothing-related advertising is illegitimate.
Respondent states that the disputed domain name was registered before the Complainant’s US trademark was granted, and that, when it registered the disputed domain name, it had no knowledge of Complainant’s previous European trademark.
Complainant registered the mark MATERIAL GIRL in 2005. A US registration was filed in 2005 and a European registration in 2004. The European registration is for clothing.
Complainant started to market a line of clothes and accessories in 2010 and registered a US trademark for that purpose.
The disputed domain name was first registered in 1998; it was registered by the Respondent in 2007.
There are multiple meanings of the term “material girl”.
Respondent is not licensed or otherwise authorized by Complainant to use its mark.
The disputed domain name is being used to resolve to web site that hosts pay-per-click links to sellers of a variety of products, including clothing products, some of which compete with Complainant, but also product lines such as “China Wholesale Phone”, “Cheap Wholesale Clothing China”, “Wholesale Clothing Suppliers”.
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.
Before dealing with the three elements of the Policy, the Panel will first deal with the issue of laches, raised by Respondent. While some recent cases have begun to apply laches in contrast to earlier cases to the contrary, the Panel is of the view that the doctrine of laches does not apply under the facts of this UDRP case. See Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”); Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint). If the doctrine of latches is to be applied, it should be applied sparingly.
Further, Complainant started to market its clothing line in 2010, so, in any case, it has not unduly delayed filing the present Complaint. Respondent is not making any present customized or specific use of its disputed domain name: the domain name is used to resolve to a web site that displays various advertising links for a variety of product lines. Respondent has apparently never made any customized or specific use of the disputed domain name. Usually the question of latches arises when Respondent has made some legitimate use of the domain name at issue, see United Press International, Inc. v. United Photographers Internationals, FA1304001492678 (Nat’l Arb. Forum May 7, 2013).
Thus the Panel dismisses Respondent’s allegations regarding laches or late filing of the Complaint.
Complainant alleges that it has common law trademarks, dating back to 1984, based on a song by Madonna. Respondent disputes this allegation. The Panel agrees with Respondent on this point: Complainant does not present sufficient evidence to establish common law trademark rights in MATERIAL GIRL, nor does it present evidence that, if such rights existed, they were transferred to it. Complainant does not provide any documentary basis for this claim because it did not provide a copy of an agreement to that effect nor a copy of Madonna’s assignment of her common law rights to Complainant. See Thomas Alarm Sys., Inc. v. cHEXx Partners, FA 1303478 (Nat. Arb. Forum Mar. 12, 2010) (finding the complainant had failed to prove secondary meaning when its “sole allusion to common law ownership of that trademark is its provision to the panel of articles of incorporation indicating that Complainant has been in business since 1984”); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); CMG Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (dismissing the complaint despite the complainant’s authorization to pursue the complaint on behalf of the owner of the trademark rights HUMPHREY BOGART, as the complainant did not own the rights to the mark); Backstreet Boys Prods., Inc. v. Zuccarini, D2000-1619 (WIPO Mar. 27, 2001) (dismissing the complaint because the complainant “failed to carry its burden that it ha[d] rights in the [BACKSTREET BOYS] trademark”).
The Panel considers that Complainant should have provided adequate documentation regarding its allegations of common law trademark rights. While the Panel could have requested such documentation pursuant to paragraph 12 of the Rules, it has decided not to do so because other evidence in the case file is dispositive.
Indeed, the alleged common law trademark is not relevant for this element of the Policy, because it is not contested that Complainant has registered the mark MATERIAL GIRL in 2005. The mark in question is a European mark, but that is sufficient for the Policy. Further, Complainant’s rights, for the purposes of the Policy, in its US mark MATERIAL GIRL date back to 2005, when it applied for registration. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)); Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Thus Complainant has rights in the mark MATERIAL GIRL and those rights predate the registration of the disputed domain name. The disputed domain name was first registered in 1998, but it was registered by Respondent in 2007, and it is that date that is relevant for the present proceeding. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated).
The disputed domain name is identical to Complainant’s mark. Thus the Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.
Respondent claims that it has rights or a legitimate interest in the disputed domain name because it is a generic, descriptive term, and it is being used to market clothing which corresponds to that descriptive term. But Respondent provides multiple definitions of the term “material girl”:
a) a girl who is (1) spontaneous and fearless; (2) a trendsetter who invents her own styles and is never afraid to make a bold, creative statement; and (3) inspired by her eclectic taste in music, dance, and celebrities;
b) a materialistic person;
c) a person who loves to wear and show off expensive clothing items or accessories;
d) a person who is driven by consumer culture: a culture which demands the consumption not only of the goods available in it, but also the mass-produced images which are its currency.
These definitions are manifestly not identical. Thus Respondent itself contradicts its allegation that the term “material girl” is a generic, descriptive term. Further, there is no doubt that the term is commonly used to refer to a song by Madonna, and it is reasonable to infer that consumers would associate the term with the clothing marketed by Complainant, which is a joint venture with Madonna.
Finally, both the US and European trademark authorities have granted trademarks to the term “material girl” for use in marketing a variety of goods, including in particular clothing. Thus the competent legal authorities have determined that the term is not generic or descriptive for what concerns clothing. See Owens Corning Fiberglas Technology, Inc v. Hammerstone, D2003-0903 (WIPO Dec. 29, 2003) (“The Panel notes, however, that Complainant owns a registration for the mark CULTURED STONE and that such registration carries with it a presumption that the mark is valid, i.e., not generic.”).
Therefore, the Panel rejects Respondent’s allegation that the term “material girl” is a generic, descriptive term that can be used to market clothing on the Internet without creating consumer confusion or diluting Complainant’s mark.
According to 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).
As explained above, the sale of clothing does not correspond to the dictionary meaning of “material girl”, and Complainant uses that trademark to market its clothing line. Further, Respondent admits that it is in the business of registering domain names to create web sites that generate click-through advertising revenue. While there is nothing wrong with doing so for truly descriptive terms, the Panel finds that that is not the case here. Indeed, the web site at the disputed domain name offers a variety of product lines, including “China Wholesale Phone”, “Cheap Wholesale Clothing China”, and “Wholesale Clothing Suppliers”. Those terms are not associated with any of the meanings of “material girl” put forward by Respondent. Thus Respondent’s use of the disputed domain name does not correspond to its own allegations regarding the meaning of the term “material girl”.
According to the cited WIPO Overview 2.0, panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support pay-per-click links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value. By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.
Furthermore, Respondent could not have gained any rights by simply registering the domain name. The domain name was registered using a privacy service. Respondent did nothing to publicly associate itself with the domain name.
As explained above, the Panel finds that, in the present case, the web site at the disputed domain name displays links that are not related to what Respondent purports to be the generic meaning of the domain name, and instead relate to the trademark value of the disputed domain name.
For the reasons given above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. See Gibson, LLC v. Jeanette Valencia, D2010-0490 (WIPO May 22, 2010); St Andrews Links Ltd v Refresh Design, D2009-0601 (WIPO June 22, 2009); Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009).
Respondent uses the disputed domain name to point to a web site containing links such as “Teen Clothing,” and “Womens Clothing Designers,” which are competitors of Complainant. This use is sufficient to show an intent to divert business, so the Panel finds that Respondent uses the disputed domain name domain name for disruptive bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Further, Respondent uses the disputed domain name to host pay-per-click links to competitors of Complainant, so Respondent is taking advantage of the likelihood of confusion related to the domain in order to profit. The Panel finds that Respondent is operating the disputed domain name so as to benefit from a likelihood of confusion between it and Complainant, which constitutes bad faith usage 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.’”).
Respondent alleges that it had no knowledge of Complainant’s mark prior to its registration of the disputed domain name, in particular because the US mark was granted only in 2010. But the European mark was granted in 2005, and the application for the US mark was filed in 2005. Given the notoriety of Madonna’s song Material Girl, the Panel finds that Respondent knew, or should have known, about Complainant’s marks when it registered the disputed domain name in 2007.
The Panel notes that according to The Wayback Machine (www.archive.org), on 16 December 2009 the web site at the disputed domain name displayed a number of advertising links, including “Related Searches: Madonna”.
Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith use and registration because people normally expect to know the identity of the person they are dealing with in a commercial transaction. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. PrivacyProtect.org / Domain Admin / ID#10760 FA1208001458550 (Nat’l Arb. Forum Sep. 17, 2012); LD Products, Inc. v. Whois Agent / Whois Privacy Protection Service, Inc., FA1311001528680 (Nat’l Arb. Forum Dec. 11, 2013); Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1410001583409 (Nat’l Arb. Forum Nov. 24, 2014); Staples, Inc. v. Whois Privacy Shield Services, FA1505001617690 (Nat’l Arb. Forum June 5, 2015). Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
For the reasons given above, the Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.
Respondent requests a finding of reverse domain name hijacking. But Complainant has satisfied the Policy, so the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <materialgirl.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston
Putnam Lowry G. Gervaise Davis III
Chartered Arbitrator & Panelist Panelist
Richard Hill, Presiding Panelist
Dated: January 4, 2016
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