Menard, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1706001734624
Complainant is Menard, Inc. (“Complainant”), represented by Michael Tidey, Wisconsin, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <memards.com>, registered with Internet Domain Service BS Corp.
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 Forum electronically on June 5, 2017; the Forum received payment on June 8, 2017.
On June 8, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <memards.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 June 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@memards.com. Also on June 12, 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 July 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant is a leading supplier of home improvement and hardware products and services. Complainant operates a chain of more than 280 retail home improvement stores throughout fourteen states in the Midwest United States. Complainant registered the MENARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,549, registered July 15, 1997). Respondent’s <memards.com> domain name is confusingly similar to Complainant’s MENARDS mark because it merely substitutes the “n” with a “m,” and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <memards.com> domain name. Respondent is not commonly known by the MENARDS mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant, nor has Complainant given Respondent permission to use the mark. Respondent also does not use the disputed domain name in connection with any bona fide offering of goods or services because it redirects users seeking Complainant to two of Complainant’s competitors, Home Depot and Amazon.
Respondent registered and uses the <memards.com> domain name in bad faith. First, Respondent registered the disputed domain name using a privacy service, which gives a presumption of bad faith. Further, Respondent uses the disputed domain name to disrupt Complainant’s business by redirecting users to Complainant’s competitors. Additionally, Respondent, presumably for commercial gain, attempts to attract Internet users to its website by creating a likelihood of confusion with the MENARDS mark. Moreover, Respondent has engaged in a pattern of bad faith registrations. Finally, Respondent had actual knowledge of Complainant’s MENARDS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Menard, Inc., is a leading supplier of home improvement and hardware products and services. Complainant operates a chain of more than 280 retail home improvement stores throughout fourteen states in the Midwest United States. Complainant has rights in the MENARDS mark through registration with the USPTO (e.g., Reg. No. 2,078,549, registered July 15, 1997). Respondent’s <memards.com> domain name is confusingly similar to Complainant’s MENARDS mark.
Respondent, Maddisyn Fernandes / Fernandes Privacy Holdings, first registered the <memards.com> domain name on December 14, 2003.
Respondent has no rights or legitimate interests in the <memards.com> domain name. Respondent uses the domain name to redirect users seeking Complainant to two of Complainant’s competitors, Home Depot and Amazon.
Respondent registered and uses the <memards.com> 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 has rights in the MENARDS mark under Policy ¶ 4(a)(i) through with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <memards.com> domain name is confusingly similar to Complainant’s mark as it simply substitutes the “n” from Complainant’s MENARDS mark with a “m” and appends the gTLD “.com.”
Respondent has no rights or legitimate interests in the <memards.com> domain name. Complainant has not authorized Respondent to use the MENARDS mark. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “Maddisyn Fernandes.” See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
Respondent uses the disputed domain name to redirect users to Complainant’s competitors. Using a confusingly similar domain name resolving to a webpage that directly competes with Complainant 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 Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Respondent has engaged in a pattern of bad faith registrations. Previous findings of bad faith against a respondent can help to evince bad faith registration. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides examples of previous UDRP decisions in which Respondent was ordered to transfer the domain names at issue. Accordingly, Respondent’s previous adverse UDRP decisions show bad faith registration under Policy ¶ 4(b)(ii).
Next, Respondent registered and uses the <memards.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Further, Respondent uses a privacy service to mask his identity when he registered the disputed domain name. Therefore, under the circumstances of this case, Respondent registered the domain name in bad faith. A respondent’s attempt to hide its identity when registering a domain name can support a finding of bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct).
Lastly, Respondent had actual knowledge of Complainant’s MENARDS mark. Actual knowledge of a complainant's rights in a mark prior to registering a disputed domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <memards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 14, 2017
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