Mobile Mini, Inc. v. Hong Kong Names LLC.
Claim Number: FA0605000715047
Complainant is Mobile Mini, Inc. (“Complainant”), represented by Michelle M. Morris, of Perkins Coie Brown & Bain P.A., 2901 North Central Avenue, Suite 2000, Phoenix, AZ 85012. Respondent is Hong Kong Names LLC. (“Respondent”), Room 2890, 14/G Shanghai Investment Building, Hong Kong 00000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mobilmini.com>, registered with Moniker Online Services, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 26, 2006.
On June 6, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <mobilmini.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 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@mobilmini.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <mobilmini.com> domain name is confusingly similar to Complainant’s MOBILE MINI mark.
2. Respondent does not have any rights or legitimate interests in the <mobilmini.com> domain name.
3. Respondent registered and used the <mobilmini.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
For over twenty years, Complainant, Mobile Mini, Inc., has continuously used the MOBILE MINI mark in connection with its business of offering the sale and rental of portable storage units and portable offices. Complainant holds a valid trademark registration for the MOBILE MINI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,538,909 issued May 19, 1989). In conjunction with its portable storage unit business, Complainant operates its official website at the <mobilemini.com> domain name, providing consumers with information about Complainants portable storage products and portable offices.
Respondent, Hong Kong Names LLC., acquired the <mobilmini.com> domain name registration at least as early as 2005. The <mobilmini.com> domain name was originally registered on December 6, 2000 by a separate registrant. Respondent’s disputed domain name resolves to a website containing links to several third-party websites offering portable storage products and services that directly compete with Complainant.
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 federal trademark registration of its MOBILE MINI mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). In Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006), the panel concluded that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i). Similarly, the panel in VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005), found that the complainant had established rights in the BAKERS SQUARE mark by registering it with the USPTO. Consequently, in light of Complainant’s registration of the MOBILE MINI mark with the USPTO, which predates the registration of the disputed domain name as well as the acquisition of the disputed domain name registration by Respondent, the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).
Furthermore, the Panel concludes that Respondent’s <mobilmini.com> domain name is confusingly similar to Complainant’s MOBILE MINI mark pursuant to Policy ¶ 4(a)(i). Respondent’s <mobilmini.com> domain name consists of Complainant’s MOBILE MINI mark, with the omission of the letter “e.” Prior panels have held that a domain name that misspells a complainant’s mark by merely omitting a single letter does not avoid the creation of confusing similarity between the domain name and the complainant’s mark. In State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000), the panel found that the domain name <statfarm.com> was confusingly similar to the complainant’s STATE FARM mark. Moreover, the panel in Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), concluded that the domain name <compq.com> was confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name did not significantly change the overall impression of the mark. Thus, the Panel in the present case finds that Respondent’s <mobilmini.com> domain name is confusingly similar to Complainant’s MOBILE MINI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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.”). The Panel finds that Complainant has sufficiently demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
Respondent’s <mobilmini.com> domain name
resolves to a website providing links to third-party websites that offer
portable storage products and services in competition with Complainant’s
business. Consequently, the Panel finds
that such use by Respondent does not represent either a bona fide
offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439
(Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use
of the complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to the complainant’s competitors, was
not a bona fide offering of goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Furthermore, the evidence on record fails to indicate that Respondent is commonly known by the <mobilmini.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant avers that Respondent is not affiliated with Complainant, and is not licensed or otherwise authorized by Complainant to use the MOBILE MINI mark. Additionally, Respondent’s WHOIS information does not suggest that Respondent conducts business under the disputed domain name. Therefore, the Panel finds that Complainant is not commonly known by the <mobilmini.com> domain name under 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Pursuant to Policy ¶ 4(a)(iii), Complainant must demonstrate that Respondent registered and used the <mobilmini.com> domain name in bad faith. In the present case, Respondent was not the original registrant of the disputed domain name, but acquired the disputed domain name registration at a later date. In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the panel addressed the issue of establishing bad faith on the part of a respondent that is not the original registrant of the disputed domain name. According to the panel in Ciccone, the acquisition of a disputed domain name registration in bad faith by a respondent is equivalent to the registration of the disputed domain name in bad faith. Therefore, consistent with the panel’s finding in Ciccone, the Panel concludes that the Complainant must demonstrate that Respondent acquired and used the <mobilmini.com> domain name in bad faith under Policy ¶ 4(a)(iii).
According to the evidence on record, Respondent is using the
disputed domain name, which is confusingly similar to Complainant’s mark, to
operate a website containing links to the competitors of Complainant’s portable
storage unit business. As a result, the
Panel finds that Respondent’s acquisition and use of the <mobilmini.com>
domain name constitutes registration and use in bad faith under Policy ¶
4(b)(iv). In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith
registration and use by using domain names that were identical or confusingly
similar to the complainant’s mark to redirect users to a website that offered
services similar to those offered by the complainant. Furthermore, in State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000), the respondent registered the
<bigtex.net> domain name in order to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website. Consequently, the panel found that the
respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv). Therefore, in the present case, the Panel finds
that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv).
Furthermore, in light of
Respondent’s use of the disputed domain name to divert Internet users to the
websites of Complainant’s competitors, the Panel finds that Respondent acquired
and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). According to the panel in Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000), a respondent violates Policy ¶ 4(b)(iii) when
the respondent has diverted business from the complainant to a competitor’s
website. See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites). Thus, the Panel finds that Respondent
acquired and used the <mobilmini.com> domain name to
disrupt the business of Complainant, evincing bad faith registration and use
under Policy ¶ 4(b)(iii).
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 <mobilmini.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 18, 2006
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