Menard, Inc., d/b/a Menards v. D.
Bargowski
Claim Number: FA0502000430904
PARTIES
Complainant
is Menard, Inc. d/b/a Menards (“Complainant”), represented by Caldwell A. Camero, 4777
Menard Dr., Eau Claire, WI 54703.
Respondent is D. Bargowski (“Respondent”),
213 Superior Boulevard, Wyandotte, MI 48192.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com>, registered with Wild West Domains, Inc.
PANEL
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 28, 2005.
On
February 25, 2005, Wild West Domains,
Inc. confirmed by e-mail to the National Arbitration Forum that the domain
names <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com> are registered with Wild West Domains,
Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that
Respondent is bound by the Wild West Domains, Inc. registration agreement and
has thereby agreed to resolve domain name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
March 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 23,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@menardsad.com, postmaster@menardsads.com,
postmaster@menardsdeals.com, postmaster@menardspecials.com, and
postmaster@menardsspecials.com by e-mail.
A
timely Response was received and determined to be complete on March 23, 2005. Even though the Response was received in
hard copy only, the Response was reviewed and considered by the Panelist.
On March 30, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that the domain names at issue are identical or confusingly similar to
marks in which the Complainant has rights; that the Respondent has no rights or
legitimate interests in the domain names at issue; and that the domain names at
issue were registered and are being used in bad faith.
B.
Respondent
The
Respondent contends they did not register the domain name in bad faith.
FINDINGS
Complainant is engaged in the business of
retailing home improvement products throughout the Midwest, and operates
approximately 200 stores in this region.
Complainant
has used its famous mark since 1959, and holds 27 U.S. trademark and service
mark registrations for said mark.
Respondent
states it is an educational group through the U.S.A., operating as school message boards.com, with
affiliate sites such as elementary
school message board(s).com, middle school message boards(s).com, and the
like.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the Complainant has rights;
(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.
Complainant owns and operates a home
improvement retail chain in the Midwestern United States. Complainant holds numerous registered trademarks
with the United States Patent and Trademark Office (“USPTO”) for this mark
(Reg. 2,191,048 issued September 22, 1998; Reg. No. 2,088,956 issued August 19,
1997; Reg. No. 2,078,549 issued July 15, 1997; Reg. No. 2,205,296 issued
November 24, 1998; Reg. No. 2,195,463 issued October 13, 1998; Reg. No.
2,205,295 issued November 24, 1998; Reg. No. 2,195,462 issued October 13. 1998;
Reg. No. 2,195,879 issued October 13, 1998; Reg. No. 2,191,047 issued September
22, 1998; Reg. No. 2,635,036 issued October 15, 2002; and Reg. No. 2,635,037
issued October 15, 2002) and for the MENARDS.COM mark (Reg. No. 2,573,989
issued May 28, 2002). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of a complainant to register all possible domain
names that surround its substantive mark does not hinder the complainant’s
rights in the mark and that “[t]rademark owners are not required to create
‘libraries’ of domain names in order to protect themselves”).
The
domain names at issue use Complainant’s famous mark coupled with a generic
word, or a deleted letter from the mark. The addition of generic words and the
deletion of a letter do not significantly distinguish the domain names from the
mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb.
Forum Dec. 18, 2000) (finding that confusion would result when Internet users,
intending to access complainant’s website, think that an affiliation of some
sort exists between complainant and respondent, when in fact, no such
relationship would exist); see also Blue
Cross & Blue Shield Ass’n v. InterActive Communications, Inc.,
D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name that merely adds
the letter ‘s’ to complainant’s mark is sufficiently similar to the mark to
cause a likelihood of confusion among the users of complainant’s services and
those who were to view a web site provided by respondent accessed through the
contested domain name); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
In addition, the domain names at issue pair
Complainant’s famous mark with the addition of various generic descriptive
terms which are commonly used in conjunction with the retail sales business,
causing even more confusion. See
Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also Christie’s
Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001)
(finding that the domain name
<christiesauction.com> is confusingly similar to Complainant's
mark since it merely adds the word auction used in its generic sense); see
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO
Mar. 3, 2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
There is no evidence to indicate
Respondent has used the domain names at issue in connection with 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). A review of the evidence presented does reveal
that the domain names at issue resolve to a website offering the domain names
for sale. Respondent claims that sites
were in use previously, but no objective evidence has been presented to
substantiate this claim. See
J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Mothers Against Drunk Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use).
There
is no evidence to indicate that the Respondent has ever, as an individual,
business or other organization, been commonly known by the name “menards.”
Furthermore, Complainant neither gave Respondent authorization nor licensed
Respondent to register or use the domain names at issue. Respondent has not presented any evidence to
indicate that Respondent is, was or ever will be commonly known by the domain
names at issue. See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where respondent was not commonly known by the mark and never applied for a
license or permission from complainant to use the trademarked name).
Respondent
states that they are an educational group throughout the U.S.A. Given the geographic location of
Complainant’s retail stores and the address provided by Respondent to the
registrar of the domain names, suggests that Respondent should have been
reasonably aware of Complainant’s mark.
Moreover, Respondent registered the domain names with actual or
constructive knowledge of Complainant’s mark because Complainant’s mark is
registered with the USPTO. See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
Respondent
admits that it offered the domain names at issue for sale over and above its
out of pocket expenses to obtain the domain name registrations. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[W]hat makes an offer to sell
a domain [name] bad faith is some accompanying evidence that the domain name
was registered because of its value that is in some way dependent on the
trademark of another, and then an offer to sell it to the trademark owner or a
competitor of the trademark owner."); see also World Wrestling Fed’n Entmt., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that respondent used the
domain name in bad faith because he offered to sell the domain name for
valuable consideration in excess of any out-of-pocket costs); see also
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name
itself notes that it is “available for lease or sale,” evidence that the domain
name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be
inferred from the fact that “the sole value of the [<wwwdinersclub.com>]
domain name is dictated by its relation to Complainant’s registered DINERS CLUB
mark”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com> domain names be TRANSFERRED from
Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 18, 2005
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