DECISION

 

Menard, Inc. v. Above.com Domain Privacy

Claim Number: FA1611001703755

 

PARTIES

Complainant is Menard, Inc. (“Complainant”), represented by Michael Tidey, Wisconsin, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <menardsrebates.com>, (‘the Domain Name’) registered with Above.com Pty Ltd.

 

PANEL

The undersigned certifies that 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.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 18, 2016; the Forum received payment on November 28, 2016.

 

On November 23, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <menardsrebates.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name.  Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@menardsrebates.com.  Also on November 29, 2016, 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 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant’s contentions can be summarized as follows:

 

Complainant, a leading supplier of home improvement and hardware products and services owns registered trademarks for MENARDS in the USA, inter alia, for retail store services, with first use in commerce for such services recorded as 1981. It operates a web site at menards.com which includes rebate promotions. It has continuously marketed its rebate program through television, radio print or Internet since 2003.

 

The Domain Name was registered in 2009. When the user visits menardrebates.com the user is redirected to a variety of web sites including a website with a variety of links relating to third party services with a link at the top right corner entitled ‘Buy this domain’, a prompt to complete an unauthorized survey, a web site that publishes food related articles and a malicious fraud web site that aims to infect the user’s computer with malware and viruses.

 

The Domain Name contains the entire MENARDS mark along with the non-distinctive word ‘rebates’ which refers to common retail promotions which Complainant offers and the gTLD .com. The addition of generic words to a mark in a domain name neither distinguishes the domain name nor eliminates the confusing similarity with the relevant trade mark.

 

Respondent has no trade mark rights or rights or legitimate interests in the MENARDS mark.

 

Respondent does not provide a bona fide offering of goods or services, has not been commonly known by the Domain Name and does not make legitimate noncommercial or fair use of the Domain Name. Complainant has not licensed Respondent to use its mark and Respondent’s web site has no nexus to Complainant or to any rebates whatsoever.

 

In December 2015, Complainant became aware of the registration and continued use of the Domain Name. Early January 2016, Complainant sent a cease and desist letter to Respondent, but received no response. Respondent continues to use the Domain Name. It should be transferred to Complainant because it is confusingly similar to the MENARDS mark. Respondent has no rights or legitimate interest in the Domain Name and Respondent has registered and used the Domain Name in bad faith.

 

Respondent has failed to provide accurate WHOIS information which raises the rebuttable presumption of bad faith registration and use.

 

Respondent redirects web site visitors for commercial gain to commercial web sites not connected with Complainant and to a link to buy the Domain Name. It attempts to attract Internet users to its website by creating a likelihood of confusion with the MENARDS mark and the use shows Respondent likely knew about Complainant and its business when it registered the Domain Name.

 

The Domain Name also points to a web site aiming to cheat Complainant’s customers and infect their computers with malware and viruses which is also bad faith registration and use.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

  

FINDINGS

Complainant, a leading supplier of home improvement and hardware products and services, owns registered trademarks for MENARDS in the USA, inter alia, for retail store services, with first use in commerce for such services recorded as 1981. It operates a web site at menards.com which includes rebate promotions.

 

The Domain Name was registered in 2009. When the user visits menardrebates.com the user is redirected to a variety of web sites including a website with a variety of links relating to third party services with a link at the top right corner entitled ‘Buy this domain’, a prompt to complete an unauthorized survey, a web site that publishes food related articles and a malicious fraud web site that aims to infect the user’s computer with malware and viruses.

 

DISCUSSION

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(f), 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 (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.”).

 

Identical or Confusingly Similar

The Domain Name consists of a sign similar to Complainant's MENARDS mark (which is registered in USA for retail services with first use in commerce recorded as 1981), the generic term ‘rebates’ and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘rebates’ does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. See, by analogy Inter Ikea Systems BV v Daniel Woodson, D2011-1933 (WIPO Jan 18, 2012)(where it was held that Internet users are likely to surmise that the Domain Name using a trade mark and generic word relating to sales promotions indicates a site belonging to or authorised by the Complainant where the Complainant’s promotions can be obtained or exchanged).

 

The gTLD .com does not serve to distinguish the Domain Name from the MENARDS mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

Complainant has not licensed Respondent to use its MENARDS mark.Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

Complainant has provided evidence that the Domain Name has been pointed to links to third party sites including a site distributing malware and has been used to collect information in a survey which is not authorized by Complainant.  

 

Previous panels have held that use of a domain name to distribute malicious computer software does not establish any rights or legitimate interests in the domain name. See Ceridian Corp v Versata Software Inc., FA 1259927 (Forum June 23, 2009)(finding that a respondent’s use of a domain name to direct Internet users to a website which attempts to download computer viruses failed to create any semblance of bona fide offering of goods and services under Policy 4 (c ) (i) or a legitimate non-commercial or fair use pursuant to Policy 4 (c ) (iii)).

 

Nor does posting to links to third party sites demonstrate rights or legitimate interests. See Priceline.com LLC v levesque, bruno, FA 1506 001625137 (Forum July 29, 2015) (‘The Panel finds that the Respondent’s attempt to divert Internet users who are looking for products relating to complainant’s famous mark to a web site unrelated to the mark does not engage in a bona fide offering of goods or services under Policy 4 (c) (i), nor does it make a legitimate noncommercial or fair use under Policy 4 (c) (iii)).

 

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.

 

Registration and Use in Bad Faith

Domain names which attempt to download malware have been found to justify a finding of bad faith. See Twitter, Inc. v Kiribati Media/Kiribati 200 Media Limited, FA 1502001603444 (Forum Mar. 19, 2015) (‘Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy 4 (a) (iii)). Further the combination of the MENARDS mark and the term ‘rebates’ referring to a scheme operated by Complainant on its web site is very specific and suggests knowledge by Respondent of Complainant and its activities at the time of registration.

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii). There is therefore no need to consider additional grounds of bad faith put forward by Complainant.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <menardsrebates.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne , Panelist

Dated:  January 4, 2017