Missoula County v. Jaroslaw Matula
Claim Number: FA1707001740854
Complainant is Missoula County (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Jaroslaw Matula (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westernmontanafair.com>, registered with Tucows Domains Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2017; the Forum received payment on July 20, 2017.
On July 21, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <westernmontanafair.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 July 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@westernmontanafair.com. Also on July 25, 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 August 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <westernmontanafair.com> domain name is identical to Complainant’s WESTERN MONTANA FAIR mark.
2. Respondent does not have any rights or legitimate interests in the <westernmontanafair.com> domain name.
3. Respondent registered and uses the <westernmontanafair.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a county and political subdivision of the state of Montana created in 1860. Complainant organizes and hosts an annual fair referred to as the WESTERN MONTANA FAIR. Complainant has established common law rights in the mark through its development of secondary meaning in the WESTERN MONTANA FAIR mark.
Respondent registered the <westernmontanafair.com> domain name on January 24, 2003, and uses it to resolve to an adult-oriented website.
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.”).
Although Complainant has not registered its WESTERN MONTANA FAIR mark with a trademark authority, Complainant contends it has common law rights in its WESTERN MONTANA FAIR mark. Common law rights in a mark may be established through relevant evidence of a mark’s secondary meaning. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (“Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Here, Complainant has established secondary meaning in its mark through its continuous, extensive and promotional use of the mark since 1879. Therefore, the Panel finds that Complainant has established common law rights in the WESTERN MONTANA FAIR mark.
Respondent’s <westernmontanafair.com> domain name is identical to Complainant’s mark because it merely appends the gTLD “.com” to the fully incorporated mark. A mark and a domain name are identical even when a TLD is added to the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Therefore, the Panel finds that Respondent’s <westernmontanafair.com> domain name is identical to Complainant’s WESTERN MONTANA FAIR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 the disputed domain name. Complainant states it has not licensed or otherwise authorized Respondent to use its WESTERN MONTANA FAIR mark. The WHOIS information for the disputed domain name lists “JAROSLAW MATULA” as the registrant. Thus, the Panel finds that there is no evidence that Respondent is commonly known by the <westernmontanafair.com> domain name. See 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); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant alleges that Respondent is not using the <westernmontanafair.com> domain name in connection with any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Complainant has provided screenshots of the disputed domain name’s resolving website which displays Complainant’s WESTERN MONTANA FAIR mark and purports to contain information about agricultural shows, but in fact hosts links to adult-oriented websites and contains sexually explicit information. The Panel finds that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see alsoTumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).
Complainant contends that it was the original registrant of the disputed domain name and Respondent has opportunistically registered the domain when Complainant inadvertently allowed the registration to expire. Opportunistic registration of a domain name evinces a Respondent’s lack of rights and legitimate interests in the domain name. See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”). For all of the reasons above, the Panel finds that Respondent lacks rights and legitimate interests in the <westernmontanafair.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and is using the <westernmontanafair.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the WESTERN MONTANA FAIR mark. Based on the screenshots provided by Complainant, the Panel agrees and finds that Respondent has created confusion and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant also asserts that Respondent has registered and is using the disputed domain name in bad faith because the domain name resolves to a website containing adult-oriented information and links to adult-oriented websites. Use of a domain name to host hyperlinks to adult-oriented sites is considered bad faith registration and use. See The TJX Companies, Inc. v. Whois-Privacy.Net ltd / DN Manager, FA1309001519645 (Forum Oct. 22, 2013) (holding that the respondent’s use of the disputed domain name to offer hyperlinks to adult-oriented businesses and websites indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). Further, Complainant argues that its WESTERN MONTANA FAIR mark has gained substantial goodwill in the community through its promotion of family friendly activities, and that the disputed website tarnishes Complainant’s reputation and could cause unsuspecting internet users, including children, to be subjected to explicit content. The Panel agrees and finds that Respondent registered and is using the <westernmontanafair.com> domain name in bad faith.
Finally, Complainant asserts that Respondent must have had actual knowledge of Complainant’s rights in the WESTERN MONTANA FAIR because the domain name is identical to Complainant’s mark and because the resolving website displays information relating to Complainant’s use of the mark. Actual knowledge of a Complainant’s rights in a mark at the time of registration is evidence of bad faith. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Therefore, the Panel finds further evidence that Respondent registered the disputed domain name in bad faith.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westernmontanafair.com> domain name be TRANSFERRED form Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page