Montech AG c/o Montrac, LLC, d/b/a Montech, LLC v. SearchTerms c/o Domain Admin
Claim Number: FA0604000676543
Complainant is Montech AG c/o Montrac, LLC d/b/a Montech, LLC (“Complainant”), represented by Mitch Tuchman, of Womble Carlyle Sandridge & Rice, PLLC, 2530 Meridian Parkway, Suite 400, Durham, NC 27713. Respondent is Search Terms c/o Domain Admin (“Respondent”), General Delivery, Georgetown, Grand Cayman, GT KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <montrac.com>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 10, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <montrac.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 2006 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@montrac.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <montrac.com> domain name is identical to Complainant’s MONTRAC mark.
2. Respondent does not have any rights or legitimate interests in the <montrac.com> domain name.
3. Respondent registered and used the <montrac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Montech AG c/o Montrac, LLC d/b/a Montech, LLC, develops and manufactures automation equipment for various industries. Complainant has been in the automation equipment business since the 1960s and has continuously used the MONTRAC mark in connection with its business since 1998.
Complainant has registered the MONTRAC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,957,074 issued February 20, 1996).
Respondent registered the <montrac.com> domain name on May 7, 2004. Respondent is operating a web directory at the disputed domain name featuring links to various content unrelated to Complainant and subjecting Internet users to pop-up advertisements.
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. 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 (Nat. Arb. 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.”).
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 rights in the MONTRAC mark
through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent’s <montrac.com>
domain name is identical to Complainant’s MONTRAC
mark pursuant to Policy ¶ 4(a)(i), because it contains the entire registered
mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel determines that the mere addition
of a gTLD to a Complainant’s mark in a domain name does not sufficiently
differentiate the domain name from the mark.
Therefore, the <montrac.com> domain name is identical to
Complainant’s MONTRAC mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as “.net”
or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <montrac.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <montrac.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.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).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Search
Terms c/o Domain Admin,” and there is no other evidence in the record
suggesting that Respondent is commonly known by the <montrac.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <montrac.com>
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 the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “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).
Furthermore, Respondent’s <montrac.com> domain
name, which is identical to Complainant’s MONTRAC mark, resolves to a website
featuring links to content unrelated to Complainant. In Black & Decker Corp. v. Clinical Evaluations, FA
112629 (Nat. Arb. Forum June 24, 2002), the respondent was using the <blackandecker.com>
domain name, which the panel held was confusingly similar to the complainant’s
BLACK & DECKER mark, to redirect Internet users to third-party commercial
websites. The panel concluded that the
respondent presumably received click-through fees for each consumer it diverted
to other websites, and that such diversion for commercial gain did not
constitute a bona fide offering of goods and services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Id.
In this case, Respondent is also redirecting Internet users seeking
Complainant’s products to other websites, and it presumably profits from this
diversion scheme. Therefore, Respondent
lacks rights and legitimate interests in the <montrac.com> domain
name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb.
Forum Apr. 25, 2003) (holding that the respondent’s use of the
<toyrus.com> domain name, a simple misspelling of the complainant’s mark,
to divert Internet users to a website that featured pop-up advertisements and
an Internet directory, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <montrac.com> domain
name, which is identical to Complainant’s MONTRAC mark, to redirect Internet
users seeking Complainant’s products to a web directory displaying links to
content unrelated to Complainant and subjecting Internet users to pop-up
advertisements. In ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000),
the panel found bad faith where the respondent had registered the
<espnclassic.com> domain name and used it to redirect Internet users to a
website at the <iwin.com> domain name, because the respondent presumably
received a portion of the advertising revenue from the third-party website by
redirecting Internet traffic there and thus the respondent was using the domain
name to attract Internet users for commercial gain. Likewise, the Panel infers that
Respondent receives referral fees for each consumer it diverts to other
websites and is, therefore, taking advantage of the confusing similarity
between the disputed domain name and Complainant’s mark in violation of Policy
¶ 4(b)(iv). See Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating
that “[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used in bad faith pursuant to Policy
¶ 4(b)(iv)); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO
Feb. 28, 2003) (finding that the respondent’s registration of an infringing
domain name to redirect Internet users to banner advertisements constituted bad
faith use of the domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <montrac.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 30, 2006
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