Molson Canada 2005 v. Name Xpress c/o Domain Administrator
Claim Number: FA0605000702230
Complainant is Molson Canada 2005 (“Complainant”), represented by Barry Hutsel, of Macera & Jarzyna LLP, Suite 1200 - 427 Laurier Avenue West, Ottawa, ON K1R 7Y2, Canada. Respondent is Name Xpress c/o Domain Administrator (“Respondent”), 338 Euston Road, London NW1 3BT, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <molsoncanadian.com>, registered with Enom, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2006.
On May 8, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <molsoncanadian.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 May 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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@molsoncanadian.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <molsoncanadian.com> domain name is identical to Complainant’s MOLSON CANADIAN mark.
2. Respondent does not have any rights or legitimate interests in the <molsoncanadian.com> domain name.
3. Respondent registered and used the <molsoncanadian.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Molson Canada 2005, and its predecessors have been brewing and selling beer since 1786 and currently operate six breweries in Canada, three in the United Kingdom, and two in the United States. Complainant has registrations in over 100 countries for various forms of its well-known MOLSON CANADIAN mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MOLSON CANADIAN mark (Reg. No. 2432906 issued March, 6, 2001). Complainant also holds trademark registrations for its MOLSON CANADIAN mark in Canada (Reg. No. TMA520813 issued December 21, 1999).
Respondent registered the <molsoncanadian.com> domain name on May 25, 2005. Respondent’s disputed domain name resolves to Respondent’s website featuring links to various third-party commercial websites.
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.
The Panel finds that Complainant’s trademark registrations with the USPTO and the Canadian Trademark Authority sufficiently establish Complainant’s rights in the MOLSON CANADIAN mark. 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.”); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction)
The Panel finds that Respondent’s <molsoncanadian.com>
domain name is identical to Complainant’s MOLSON CANADIAN mark pursuant to
Policy ¶ 4(a)(i). The addition of the
generic top-level domain name “.com” to Complainant’s MOLSON CANADIAN trademark
does not sufficiently differentiate Respondent’s domain name from Complainant’s
mark. In Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel found
that the addition of a top-level domain name is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name. See Fed’n of Gay Games,
Inc. v. Hodgson, D2000-0432
(WIPO June 28, 2000) (finding that the domain name <gaygames.com> is
identical to the complainant's registered trademark GAY GAMES). In addition, the disputed domain name is
identical to Complainant’s MOLSON CANADIAN mark despite the lack of a space
between “Molson” and “Canadian.” See Charles Jourdan Holding AG
v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s
domain name <charlesjourdan.com> is identical to the complainant’s
marks); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum
May 9, 2000) (finding that the domain name <radioshack.net> is identical
to the complainant’s mark, RADIO SHACK).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to resolve whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS database entry for the <molsoncanadian.com> domain name lists the administrative contact for the domain name as “Name Xpress.” The WHOIS database entry contains no evidence that Respondent is commonly known by the <molsoncanadian.com> domain name, and there is no other evidence on record that Respondent has ever been commonly known by the disputed domain name. In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel found that given the WHOIS contact information for the disputed domain name, it could be inferred that the respondent, Onlyne Corporate Services11, was not commonly known by the name ‘welsfargo’ in any derivation. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Therefore, in this case, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
the disputed domain name to operate a website which provides links to
third-party commercial websites. The
Panel presumes Respondent receives click-through fees in exchange for diverting
Internet users to these other websites.
Therefore, Respondent’s use of the disputed domain name is not 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). See WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy); see also Seiko Kabushiki Kaisha v.
CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent receives click-through fees in exchange for diverting Internet users to other websites. Respondent’s <molsoncanadian.com> domain name incorporates Complainant’s MOLSON CANADIAN mark in its entirety. Moreover, because Respondent’s website features links labeled that appear to relate to Complainant’s business, Internet users may mistakenly believe that the resulting website is affiliated with Complainant. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that the respondent’s use of the <mailonsunday.com> domain name was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to third-party cites and Respondent presumably commercially benefited from the misleading domain name by receiving “click-through-fees.” See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant). The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <molsoncanadian.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 21, 2006
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