Mothers Polishes Waxes Cleaners v. Shine
Boys c/o Robert Petruska
Claim
Number: FA0504000465244
Complainant is Mothers Polishes Waxes Cleaners (“Complainant”),
represented by Stephen J. Strauss of Fulwider Patton Lee and Utecht, LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Shine Boys c/o Robert Petruska (“Respondent”), 70 N.
Main St., Poland, Ohio 44514.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <motherswax.com>, registered with Go
Daddy Software, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 20, 2005.
On
April 20, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <motherswax.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 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@motherswax.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <motherswax.com>
domain name is confusingly similar to Complainant’s MOTHERS mark.
2. Respondent does not have any rights or
legitimate interests in the <motherswax.com> domain name.
3. Respondent registered and used the <motherswax.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Mothers Polishes Waxes Cleaners, is in the
business of manufacturing, distributing, advertising and selling a complete
line of automobile cleaning and polishing products under the MOTHERS mark. Complainant has been in business since at
least the early 1970s.
Complainant holds numerous trademark registrations in several countries
and with the United States Patent and Trademark Office (“USPTO”) for the
MOTHERS mark (including Reg. No. 1,021, 824 issued October 7, 1975 and Reg. No.
1,253,535 issued October 11, 1983). Furthermore, Complainant owns the registration for the
<mothers.com> domain name, which it registered on October 13, 1995.
Respondent registered the <motherswax.com> domain name on June 12, 2001. Respondent has made no use of the disputed
domain name since its registration.
Furthermore, Respondent is a competitor of Complainant in the automotive
wax, polish and cleaning product marketplace.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established with extrinsic proof in this proceeding that it has presumptive
rights in the MOTHERS mark through registration with the USPTO. Since Respondent has not submitted a
response to dispute Complainant’s prima facie case of rights, the Panel
finds that Complainant has rights in the MOTHERS mark for purposes of Policy ¶
4(a)(i). 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).
The <motherswax.com>
domain name registered by Respondent includes Complainant’s MOTHERS mark in its
entirety and adds the generic or descriptive term “wax,” which is indicative of
Complainant’s business. Countless
panels have held under the Policy that the addition of a generic or descriptive
term to a complainant’s registered mark does not differentiate the domain name
from the mark, especially where the term is related to Complainant’s
business. Therefore, the Panel finds
that Respondent’s domain name is confusingly similar to Complainant’s mark in
accordance with Policy ¶ 4(a)(i). 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Thus,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure to submit a response to the
allegations of the Complaint entitles the Panel to accept all reasonable
allegations and inferences in the Complaint as true unless clearly contradicted
by the evidence. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response a panel is free to make inferences from the very failure
to respond and assign greater weight to certain circumstances than it might
otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <motherswax.com>
domain name that contains Complainant’s MOTHERS mark in its entirety. Complainant has made a prima facie case in support of its allegations, so the burden
shifts to Respondent to make a showing that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
However, Respondent has failed to respond to Complainant’s allegations
and to provide evidence of rights or legitimate interests. Respondent has, therefore, failed to meet
its burden and the Panel concludes that Respondent lacks rights and legitimate interests
in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that, once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
It is Complainant’s
contention that Respondent has made no use of the <motherswax.com>
domain name since registering the domain name almost four years ago. Furthermore, Respondent has provided no
evidence of any demonstrable preparations to use the domain name for any
purpose. The Panel finds that
Respondent’s failure to use the domain name, containing Complainant’s mark, for
four years and to not respond to the Complaint is evidence of passive holding,
which does not constitute 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 Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that Respondent made preparations to use the domain name or one like it
in connection with a bona fide offering of goods and services before notice of
the domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name); see also Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did nothing with it”).
Complainant
claims that Respondent is not commonly known by the <motherswax.com>
domain name and that Respondent has no relationship with Respondent and has not
been authorized by Complainant to register the disputed domain name. Since Respondent has not filed a response or
provided any evidence to rebut Complainant’s assertion, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s rights in the mark precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support the finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
According to the
record, the <motherswax.com> domain name has not been in use since
Respondent registered the domain name four years ago. Furthermore, Complainant asserts that Respondent is a competitor
in the automotive wax, polish and cleaning products business. Registration of a domain name that includes
Complainant’s registered MOTHERS mark by one of Complainant’s competitors and
the subsequent non-use of that domain name for four years constitutes passive
holding and is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that
Respondent’s failure to develop its website in a two year period raises the
inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith).
Respondent’s
registration of a domain name that includes Complainant’s MOTHERS mark in its
entirety suggests that Respondent knew of Complainant’s rights in the
mark. In addition, the connection
between the generic or descriptive term “wax” in the domain name and
Complainant’s business is further evidence of Respondent’s actual knowledge,
especially since Respondent is Complainant’s direct competitor. Furthermore, Complainant’s registration of
the mark with the USPTO bestows upon Respondent constructive knowledge of
Complainant’s rights in the mark.
Respondent’s registration of a domain name confusingly similar to
another’s mark despite actual or constructive knowledge of another’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). 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 Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); 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.”).
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 <motherswax.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 1, 2005
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