Ontel Products Corporation v. waweru njoroge
Claim Number: FA1712001762229
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is waweru njoroge (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magictrackscars.com>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2017; the Forum received payment on December 11, 2017.
On Dec 11, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <magictrackscars.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@magictrackscars.com. Also on December 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.
A timely Response was received and determined to be complete on December 20, 2017.
On December 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Ontel Products Corporation, is a United States direct response company founded in 1994 and develops, markets, and distributes various consumer goods, including the MAGIC TRACKS race track toy. Complainant has rights in the MAGIC TRACKS mark based upon registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,143,300, registered Feb. 14, 2017).
Respondent’s <magictrackscars.com> domain name is confusingly similar to Complainant’s MAGIC TRACKS mark, as the domain name contains the mark in its entirety, and merely adds the descriptive term “cars.” The inclusion of this term increases the confusing similarity of the domain name, as it suggests affiliation with Complainant’s legitimate business.
Respondent has no rights or legitimate interests in the <magictrackscars.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MAGIC TRACKS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website which prominently displays Complainant’s marks and purports to be an online store for Complainant’s MAGIC TRACKS products. Complainant believes the products offered are counterfeit versions of Complainant’s products.
Respondent registered and is using the <magictrackscars.com> domain name in bad faith. Respondent’s use of the domain name to disrupt Complainant’s business by causing people to mistakenly believe they are visiting an authorized seller of authentic MAGIC TRACKS products. Also, the domain name serves to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s MAGIC TRACKS mark to extract personal information and/or money from people. Further, the registration of a domain name which is so strongly connected to Complainant’s mark suggests bad faith.
B. Respondent
Respondent contends as follows:
The addition of the term “cars” serves to distinguish the <magictrackscars.com> domain name from the mark, as it describes the services provided on the resolving website; namely, the sale of extra cars.
Respondent is using the domain names to run a legitimate business. Respondent’s website is in no way similar in look or feel to Complainant’s website. Respondent does not claim anywhere on the site that the products offered are produces by either Respondent or Complainant. Respondent does not use logos or taglines to claim affiliation with Complainant. In fact, Respondent includes a disclaimer on the resolving website disclaiming association with Complainant.
Respondent does not intend to harm Complainant or any other business, as demonstrated by the fact that it is not attempting to undercut Complainant on price. Further, the fact that the products offered on Respondent’s websites are not manufactured by Complainant does not mean they are counterfeit. Respondent does not claim the goods are Complainant’s.
Respondent has no intentions of selling the domain name to Complainant, and Complainant’s resort to this proceeding is a calculated effort to obtain others’ businesses through anti-competitive means. Complainant is merely attempting to obtain the domain name in bad faith because it ranks so well on search engines. There are multiple other websites purporting to sell similar products.
Complainant has rights in the MAGIC TRACKS mark through the registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MAGIC TRACKS trademark.
Respondent uses the domain name to address a website that sells products that directly compete with Complainant’s MAGIC TRACKS products and may be characterized as counterfeit.
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.
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant owns a registered trademark for its MAGIC TRACKS mark. The mark’s USPTO trademark registration is conclusive evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <magictrackscars.com> domain name contains Complainant’s entire MAGIC TRACKS trademark less its space, followed by the descriptive “cars,” all with the top-level “.com” appended thereto.The differences between Complainant’s trademark and the <magictrackscars.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). In fact the inclusion of the term “cars” in the domain name is suggestive of Respondent’s toy car related trademark and therefore adds to the confusion resulting from Respondent’s inclusion of Complainant’s MAGIC TRACKS trademark in its domain name. Therefore, the Panel concludes that Respondent’s <magictrackscars.com> domain name is confusingly similar to Complainant’s MAGIC TRACKS trademark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances, or other circumstances, from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “waweru njoroge” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <magictrackscars.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <magictrackscars.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <magictrackscars.com> domain name addresses a website that that offers products that compete with those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Respondent offers no evidence or argument supporting its conclusory statements that it is using the domain name to operate a legitimate business notwithstanding the overt use of Complainant’s trademark on its commercial website and within the website’s referring domain name. The fact that Respondent may have placed a disclaimer on its website is of no consequences to finding Respondent lacks rights and legitimate interests. See Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above, Respondent’s confusingly similar domain name addresses a website which offers products that directly compete with those offered by Complainant. Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also 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.”); see also, Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Respondent offers no defense to Complainant’s bad faith claims. Indeed, Respondent appears to have no regard whatsoever for Complainant’s trademark rights, as if such rights did not exist when clearly they do.
Finally, Respondent had actual knowledge of Complainant’s rights in the MAGIC TRACKS mark when Respondent registered the <magictrackscars.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the mark and reference to MAGIC TRACKS related products on Respondent’s <magictrackscars.com> website. Moreover, Respondent implicitly admits that Complainant has rights in the MAGIC TRACKS trademark by attempting to disclaim any association with Complainant via a fine print statement on the <magictrackscars.com> website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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). Likewise, Respondent’s registration of a domain name which is so strongly connected with Complainant’s marks and goods suggests bad faith. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magictrackscars.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 22, 2017
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