Steve Wainshtok dba Magic Locksmith v. Magic Locksmith
Claim Number: FA1701001711129
Complainant is Steve Wainshtok dba Magic Locksmith (“Complainant”), represented by Kevin Keener of Keener & Associates, P.C., Illinois, USA. Respondent is Magic Locksmith (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magiclocksmith.net>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2017; the Forum received payment on January 5, 2017.
On January 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <magiclocksmith.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2017 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@magiclocksmith.net. Also on January 10, 2017, 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 February 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
1. Complainant provides locksmithing goods and services in Los Angeles County, California. Complainant uses the MAGIC LOCKSMITH mark in conjunction with his business practices. Claimant asserts common law rights to the MAGIC LOCKSMITH mark, as it has been using the mark since November 9, 2004. Complainant obtained business licenses with the City of Los Angeles Police Commission, Los Angeles County, and the Bureau of Security and Investigative Services for the State of California under the MAGIC LOCKSMITH mark. Complainant has been continuously registered with the aforementioned agencies since 2004, with current licenses valid until November 30, 2018. See Compl., at Attached Exs. A–C. Respondent’s <magiclocksmith.net> is identical to Complainant’s MAGIC LOCKSMITH mark because it uses the mark in its entirety, removing the space and adding the “.net” generic top level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in <magiclocksmith.net>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the MAGIC LOCKSMITH mark in any regards, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <magiclocksmith.net> resolves to a webpage offering services in direct competition to Complainant’s business, negatively impacting the good will of the MAGIC LOCKSMITH mark. See Compl., at Attached Ex. N.
3. Respondent registered and is using <magiclocksmith.net> in bad faith. The disputed domain name appears to disrupt Complainant’s business by promoting competing services. Additionally, Respondent’s <magiclocksmith.net> creates actual confusion with customers in search of Complainant’s business. Customers believe they are receiving services from Complainant, when they are receiving Respondent’s services, which has been negatively impacting the good will of the MAGIC LOCKSMITH mark. See Compl., at Attached Exs. M–N.
1. Respondent has not submitted a Response.
1. Respondent’s <majiclocksmith.net> domain name is confusingly similar to Complainant’s MAGIC LOCKSMITH mark.
2. Respondent does not have any rights or legitimate interests in the <majiclocksmith.net> domain name.
3. Respondent registered or used the <majiclocksmith.net> domain name in bad faith.
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.”).
Complainant provides locksmithing goods and services in Los Angeles County, California. Complainant uses the MAGIC LOCKSMITH mark in conjunction with these business practices. Claimant asserts common law rights to the MAGIC LOCKSMITH mark, as it has been using the mark since November 9, 2004. Complainant states it obtained business licenses with the City of Los Angeles Police Commission, Los Angeles County, and the Bureau of Security and Investigative Services for the State of California under the MAGIC LOCKSMITH mark. Additionally, Complainant claims it has been continuously registered with the aforementioned agencies since 2004, with current licenses valid until November 30, 2018. See Compl., at Attached Exs. A–C. “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Moreover, “[r]egistration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i).” Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015). Therefore, the Panel finds that Complainant has established sufficient common law rights to the MAGIC LOCKSMITH mark.
Complainant maintains that Respondent’s <magiclocksmith.net> is identical to Complainant’s MAGIC LOCKSMITH mark because it uses the mark in its entirety, removing the space and adding the “.net” gTLD. Panels typically find that the addition of a gTLD and removal of a space are not sufficient to distinguish a disputed domain name from the original mark. See Vince Andrich v. AnonymousSpeech AnonymousSpeech, FA 1406333 (Forum Oct. 26, 2011) (finding confusing similarity per Policy ¶ 4(a)(i) as “Respondent’s <vinceandrich.net> domain name is composed of Complainant’s mark, without the space between words, combined with the gTLD “.net.” These changes do not distinguish the disputed domain name from Complainant’s VINCE ANDRICH mark.”). In the instant case, the Panel concludes that Respondent’s <magiclocksmith.net> is identical to Complainant’s MAGIC LOCKSMITH 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 (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 (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 asserts that Respondent has no rights or legitimate interests in <magiclocksmith.net>. To support its argument, Complainant identifies that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicate that Respondent used the privacy service “Domains By Proxy LLC” to shield its identity. See Compl., at Attached Ex. O. When “[t]he WHOIS information lists [privacy service] as the registrant of record for the disputed domain names[,] in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.” Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015). See also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). In the absence of evidence to the contrary, the Panel agrees and find that Respondent is not commonly known by the disputed domain name.
Complainant asserts that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant illustrates that Respondent’s <magiclocksmith.net> resolves to a webpage offering services in direct competition to Complainant’s business, infringing on the good will of the MAGIC LOCKSMITH mark. See Compl., at Attached Ex. N. Panels have found finding that a respondent’s use of disputed domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods. Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000). Additionally, Panels generally find that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).” See General Motors LLC v. MIKE LEE , FA 1659965 (Forum March 10, 2016). In the instant case, the Panel concludes that Respondent does not have rights or legitimate interests in <magiclocksmith.net> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent registered and is using <magiclocksmith.net> in bad faith. To remind the Panel, the disputed domain name resolves to a webpage that offers goods and services in direct competition to Complainant’s business. See Compl., at Attached Ex. N. The disputed domain name appears to disrupt Complainant’s business by promoting competing services. Where a “[r]espondent is appropriating [a c]omplainant’s mark to divert [c]omplainant’s customers to Respondent’s competing business[, Panels have found] this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005). Additionally, Respondent’s <magiclocksmith.net> creates actual confusion with customers in search of Complainant’s business. Customers believe they are receiving services from Complainant, when they are receiving Respondent’s services, which has been negatively impacting the good will of the MAGIC LOCKSMITH mark. See Compl., at Attached Exs. M–N. “Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).” ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015). Here, the Panel concludes that Respondent registered and is using <magiclocksmith.net> in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magiclocksmith.net> domain name be be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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