Menard, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1805001785761
Complainant is Menard, Inc. (“Complainant”), represented by Michael Tidley of Menard, Inc., Wisconsin, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <menardes.com> and <mendards.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.
Charles A. Kuechenmeister as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2018; the Forum received payment on May 14, 2018.
On May 11, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <menardes.com> and <mendards.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. 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 May 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 6, 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@menardes.com and postmaster@mendards.com. Also on May 17, 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 June 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE
Multiple Domain Names
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The evidence submitted by Complainant bearing on this issue consists entirely of the WHOIS records pertaining to the domain names at issue in these proceedings (the “Domain Names”). Those records, submitted as Exhibit 2 to the Complaint, show that both Domain Names are registered to the same entity, Whois Privacy Corp., whose address is in Nassau, Bahamas. Both Domain Names were registered the same year, 2003, with the same registrar. Finally, both Domain Names contain similar misspellings of Complainant’s MENARDS mark. On this evidence the Panel finds that both Domain Names are registered by the same person or entity, and will proceed as to both of them.
A. Complainant
Complainant is a leading supplier of home improvement and hardware products and services. Complainant owns registrations for the MENARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,549 registered Jul. 15, 1997). Respondent’s Domain Names are confusingly similar to Complainant’s MENARDS mark as they incorporate that mark in its entirety, varying it only by misspellings which add a single letter, and append the generic top-level domain “.com.”
Respondent does not have rights or legitimate interests in the disputed domain names. It is not authorized to use Complainant’s MENARDS mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent’s Domain Names redirect Internet users to Complainant’s competitors such as The Home Depot, JC Penney, and Amazon.com, Inc.
Respondent registered and is using the Domain Names in bad faith. It is using them to redirect Internet traffic to the web sites of Complainant’s competitors, and Respondent is attempting to attract internet users to its website by creating a likelihood of confusion with the MENARDS mark. Further, Respondent failed to respond to Complainant’s cease and desist letter, and registered the domain names using false WHOIS information. Additionally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel makes the findings set forth below with respect to the Domain Names.
Complainant registered its MENARDS mark with the USPTO (Reg. No. 2,078,549) on July 15, 1997. See, Complaint Exhibit 3. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i.) Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MENARDS mark, varying it only by adding a single letter and the generic top-level domain (“gTLD”) “.com.” These changes are insufficient to distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the MENARDS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because they redirect Internet users to the web sites of Complainant’s competitors, (ii) Respondent is not commonly known by either of the Domain Names, and (iii) Complainant has not licensed or authorized Respondent to use its mark for any purpose whatever. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Exhibit 2, the Domain Names are registered to “Domain Admin / Whois Privacy Corp.,” which names bear no resemblance to the Domain Names. This is competent evidence that Respondent is not commonly known by the any of the Domain Names. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its MENARDS mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, both Domain Names resolve to the web sites of Complainant’s competitors, such as The Home Depot, JC Penny and Amazon.com. See, Complaint Exhibits 10-13. Use of a domain name to redirect Internet users to a complainant’s competitors is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii). Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Names resolve to the web sites of Complainant’s competitors is also evidence of bad faith registration and use. As noted by another panel several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to redirect Internet traffic to the web sites of a complainant’s competitors has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Further, Respondent has engaged in typosquatting, which in itself supports a finding of bad faith under the Policy. Typosquatting consists of intentionally misspelling a domain name in a manner that causes it to appear at first glance to be the complainant’s domain name but is nevertheless slightly different, and this is independent evidence of bad faith. Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Respondent’s misspellings of Complainant’s MENARDS mark is clear evidence of intent to deceive, and constitutes evidence of bad faith registration and use.
According to the USPTO registration statement for the MENARDS mark (Reg No. 2,078,549) attached to the Complaint as Exhibit 3, Complainant has used that mark in commerce since May 1981. Given that fact and Complainant’s demonstrated presence in the retail sales of building materials and related goods, plus the fact that Respondent’s Domain Names redirect visitors to the sites of other firms that are involved in the same industry, it is clear that Respondent knew of Complainants’ marks when it registered the Domain Names. Indeed, it is evident that Respondent registered them precisely because they do contain Complainant’s mark and would likely attract Internet traffic to its sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of 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). Respondent clearly knew of Complainant and its marks when he registered the Domain Names, and this is clear evidence of bad faith registration.
Finally, Complainant asserts that Respondent registered and is using the Domain Names to divert users, presumably for commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). In this case, the web sites resolving from the Domain Names belong to other entities, e.g., the Home Depot, JC Penny, and Amazon.com. Complainant alleges that the Respondent profits from this in some way but there is no evidence before the Panel of any commercial gain currently being generated from this use. Nevertheless, the list of circumstances in Policy ¶ 4(b) is not exclusive. The fact that Respondent incorporated Complainant’s MENARDS mark so obviously into the Domain Names is ample evidence that he is intentionally attempting to attract Internet users by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Even without evidence of revenues present at this time, the obvious copying of Complainant’s registered mark in these Domain Names is sufficient evidence of bad faith registration and use for the purposes of Policy ¶ 4 (a)(iii). Red Bull GmbH v. Gutch, WIPO Case No. 2000-0766 (September 21, 2000) (finding bad faith registration and use where respondent’s domain name incorporated complainant’s mark verbatim but respondent had not yet activated the resolving web site).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <menardes.com> and <mendards.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 13, 2018
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