Masonite International Corporation and Masonite Corporation v. shi lei
Claim Number: FA1803001779408
Complainants Masonite International Corporation and Masonite Corporation (collectively “Complainant”), are represented by Joseph W. Berenato of Berenato & White, LLC, Maryland, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masonitebenefit.com>, registered with NameSilo, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2018; the Forum received payment on March 28, 2018.
On March 28, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <masonitebenefit.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@masonitebenefit.com. Also on April 4, 2018, 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 April 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Masonite International Corporation and Masonite Corporation, are in the business of the manufacture, sale, and distribution of building products including without limitation doors, door facings, pre-hung doors and related assemblies such as door lites, side lites and transom lites, and related goods and services. Since at least as early as 1926, Complainant has continuously utilized the MASONITE mark to identify its business, products and services.
2. Complainant has rights in the MASONITE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 248,040, registered Oct. 16, 1928). Respondent’s <masonitebenefit.com>[i] domain name is confusingly similar to Complainant’s MASONITE mark as it incorporates the mark in its entirety and merely adds the generic term “benefit” and the “.com” generic top-level domain name (“gTLD”).
3. Respondent has no rights or legitimate interests in the <masonitebenefit.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use the MASONITE mark in any manner. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a webpage with hyperlinks to third-party commercial websites for Respondent’s presumed commercial gain.
4. Respondent registered and is using the <masonitebenefit.com> domain name in bad faith. It intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
5. Further, Respondent has a history of adverse UDRP decisions. Finally, Respondent had actual knowledge of Complainant’s rights in the MASONITE mark prior to registering the <masonitebenefit.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Masonite International Corporation and Masonite Corporation. Complainants contend that Masonite Corporation is a wholly-owned subsidiary of Masonite International Corporation and so for the purposes of Supplemental Rule 1(e), Complainants are requesting to proceed as one party since they have a close corporate link. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and therefore will allow them to proceed as a single entity in this proceeding.
Complainant holds trademark rights for the MASONITE mark. Respondent’s domain name is confusingly similar to Complainant’s MASONITE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <masonitebenefit.com> domain name and that Respondent registered and uses the 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.”).
Masonite International Corporation and Masonite Corporation are in the business of the manufacture, sale, and distribution of building products including without limitation doors, door facings, pre-hung doors and related assemblies such as door lites, side lites and transom lites, and related goods and services. Complainant has rights in the MASONITE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 248,040, registered Oct. 16, 1928).
Respondent’s <masonitebenefit.com> domain name is confusingly similar to Complainant’s MASONITE mark as it incorporates the mark in its entirety and merely adds the generic term “benefit” and the “.com” generic top-level domain name (“gTLD”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <masonitebenefit.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <masonitebenefit.com> domain name, as Respondent is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017). The WHOIS information of record for the <masonitebenefit.com> domain lists the registrant as “shi lei,” and no information indicates that Respondent owns any trademark or service mark rights in the MASONITE name. The Panel therefore finds that Respondent is not commonly known by the <masonitebenefit.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent’s lack of rights or legitimate interests in the <masonitebenefit.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has provided evidence that the domain name resolves to a webpage which is being used to obtain click-through revenue by linking to third-party websites. Use of a domain name that incorporates the mark of another to host a page of third-party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum Jul. 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website 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).”). The Panel therefore holds that Respondent does not have rights or legitimate interests in the <masonitebenefit.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s history of adverse UDRP decisions is evidence of its bad faith. A history of adverse UDRP decisions against a respondent can be evidence of its bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 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 has provided evidence that Respondent was involved in three disputes in which Respondent was found to have registered and used the domain names in bad faith. The Panel therefore finds that Respondent registered and used the <masonitebenefit.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent’s bad faith is indicated by its use of the <masonitebenefit.com> domain name to link to third party websites in an attempt to gain commercially by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such use demonstrates a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent has acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which respondent of presumably commercially gained). Complainant has shown that the <masonitebenefit.com> domain name resolves to a webpage displaying links to third party websites for Respondent’s presumed commercial gain. The Panel holds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends that given the length and breadth of Complainants’ use and protection for the MASONITE mark, it is inconceivable that Respondent could have registered the <masonitebenefit.com> domain name without actual knowledge of Complainant’s rights in the mark. The Panel agrees. Registration and use of an infringing domain name with actual knowledge of a mark holder’s rights can demonstrate bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds 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 <masonitebenefit.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 5, 2018
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