Neal & Massy Holdings Limited v. Stanley Ma / Mage International Development
Claim Number: FA1402001545266
Complainant is Neal & Massy Holdings Limited (“Complainant”), represented by Sheryl De Luca of Nixon & Vanderhye P.C., Virginia, USA. Respondent is Stanley Ma / Mage International Development (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <massygroup.com>, registered with Tucows, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2014; the National Arbitration Forum received payment on February 24, 2014.
On February 25, 2014, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <massygroup.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@massygroup.com. Also on February 28, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant made the following contentions.
i. Complainant, Neal & Massy Holdings Limited, has used the NEAL & MASSY trademark in connection with an investment holding/management company.
ii. Complainant owns common law rights in the NEAL & MASSY and NEAL & MASSY GROUP marks.
iii. The disputed domain name is confusingly similar to Complainant’s marks.
i. Respondent has no legitimate rights or legitimate interests in the domain name.
ii. Respondent is not known by the name “Massy Group.”
iii. Respondent operates a website on <massygroup.com> which contains links to businesses operated by third-parties offering various goods and services associated with tourism, investment and finance, and communications/information technology.
i. Respondent has registered and is using the disputed domain name in bad faith.
ii. Respondent’s purpose in registering the <massygroup.com> domain name must have been to disrupt Complainant’s business.
iii. Respondent’s purpose in registering the <massygroup.com> domain name must have been to divert traffic for its own gain.
iv. It is inconceivable that Respondent did not know of Complainant’s existence and reputation at the date of registration of the <massygroup.com> domain name.
Respondent failed to submit a response in this proceeding.
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."
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant alleges that it has used the NEAL & MASSY and NEAL & MASSY GROUP trademarks in connection with its extensive business activities including an investment holding/management company. The Panel notes that Complainant does not have a registered trademark with a trademark agency. However, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant have a valid trademark registration so long as it can establish secondary meaning in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). If Complainant can show secondary meaning in the NEAL & MASSY and NEAL & MASSY GROUP marks, the Panel will be able to find that Complainant has common law rights in the NEAL & MASSY and mark under Policy ¶ 4(a)(i).
Complainant asserts that it owns common law rights in the NEAL & MASSY and NEAL & MASSY GROUP marks. Complainant argues that it has used the trademarks as trademarks and trade names since January 23, 1933. Complainant alleges that for over 80 years, it has had not only a presence in Trinidad & Tobago, but also a regional presence in the Caribbean and a global presence. Complainant argues that it has promoted its goods and services by use of the marks in various ways, such as using them on its letterhead and promoting its products and services through advertisements and regional publications and other business activities. See Complainant’s Exhibit 1. Complainant claims that it has invested a substantial amount of money in marketing and promoting its NEAL & MASSY and NEAL & MASSY GROUP branded goods and services. See Complainant’s Exhibit 9. Complainant contends that it had a profit before tax of $843 million in 2013, $802 million in 2012, and $640 million in 2011. See Complainant’s Exhibit 6. In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel found that “Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” As the Panel finds that Complainant has shown secondary meaning in its NEAL & MASSY and NEAL & MASSY GROUP marks and hence that the marks are the source of Complainant’s goods and services, the Panel holds that Complainant has shown common law rights in the marks pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s NEAL & MASSY and NEAL & MASSY GROUP marks. Complainant argues that Respondent’s <massygroup.com> domain name is confusingly similar to Complainant’s marks. The Panel notes that Respondent removes the word “NEAL” and the punctuation “&” from Complainant’s marks in its disputed domain name. The Panel finds that Respondent’s removal of terms and punctuation does not distinguish the disputed domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name). Lastly, the Panel notes that Respondent omits and space between MASSY and GROUP in the <massygroup.com> domain name and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s elimination of spaces and inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel holds that Respondent’s <massygroup.com> domain name is confusingly similar to Complainant’s NEAL & MASSY and NEAL & MASSY GROUP marks according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NEAL & MASSY and NEAL &
MASSY GROUP marks and to use them in its domain name, making only alterations that do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent has then linked the <massygroup.com>, domain name to a website
which contains links to businesses operated by third-parties offering various goods and services associated with tourism, investment and finance, and communications/information technology services, some of which are in competition with Complainant;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant states that Respondent is not known by the name “Massy Group.” Complainant contends that it neither licensed nor authorized Respondent to use any part of the NEAL & MASSY and NEAL & MASSY GROUP marks. Complainant claims that it also has not endorsed the contents of Respondent’s website. The Panel notes that the WHOIS information identifies “Stanley Ma / Mage International Development” as the registrant of the <massygroup.com> domain name. Thus, the Panel finds that, based on the lack of evidence showing that Respondent is known by the disputed domain name, Respondent is not commonly known by the <massygroup.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e)Complainant alleges that Respondent operates a website at <massygroup.com> which contains links to businesses operated by third-parties offering various goods and services associated with tourism, investment and finance, and communications/information technology. The Panel observs that Respondent is using the disputed domain name to divert consumers to a website offering competing links titled “Online Stock Trading,” “INVEST SLOW (AND SMART),” “EZTRADER OFFICIAL WEBSITE,” and more. See Complainant’s Exhibit 10. Complainant asserts that the subject matter of Respondent’s website is in the same field as Complainant’s goods and services and the goods and services to which Respondent directly links overlap with Complainant’s goods and services. Prior UDRP panels have determined that a respondent’s use of a domain name to host a webpage featuring competing links was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)). Accordingly, the Panel finds that Respondent is not using the <massygroup.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant asserts that Respondent’s purpose in registering the <massygroup.com> domain name must have been to disrupt Complainant’s business. The Panel observes that Respondent is using the disputed domain name to host a competing hyperlink farm, including links such as “Practice Day Trading,” “Tradestation is #1,” “Forex.com—Official Site,” and more. See Complainant’s Exhibit 10. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” As the Panel finds that in view of Respondent’s use of the <massygroup.com> domain name to host links to competitors, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent’s purpose in registering the <massygroup.com> domain name must have been to divert traffic for its own gain. The Panel notes that Respondent’s disputed domain name resolves to a website providing links that are related to Complainant’s business. See Complainant’s Exhibit 10. Complainant argues that a large proportion of persons searching Respondent’s website would expect to find a site operated and authorized by Complainant, thus showing a likelihood of confusion. Additionally, Complainant asserts that the operators of businesses at the linked sites are likely to gain a commercial advantage from increased traffic generated by that confusion. Therefore, the Panel holds that Respondent has registered and is using the <massygroup.com> domain name to attract consumers to its own website for commercial profit, showing bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Thirdly, Complainant states that because it has been a major factor in numerous industries since the 1930s in the Caribbean and elsewhere, it is inconceivable that Respondent did not known of Complainant’s existence and reputation at the date of registration of the <massygroup.com> domain name. Although prior panels have held that constructive knowledge alone is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the marks and Complainant's rights. Accordingly, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the NEAL & MASSY and NEAL & MASSY GROUP marks and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <massygroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 31, 2014
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