Morpace International, Inc. v. Paul Mayer
Claim Number: FA1608001690106
Complainant is Morpace International, Inc. (“Complainant”), represented by Brian A. Nettleingham of Maddin, Hauser, Roth & Heller, P.C., Michigan, United States. Respondent is Paul Mayer (“Respondent”), New Hampshire, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morpaceinc.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2016; the Forum received payment on August 19, 2016.
On August 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <morpaceinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2016 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@morpaceinc.com. Also on August 22, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses its MORPACE mark in conjunction with its business of providing services that include, but are not limited to, conducting business and market research surveys, market research and analysis, market research, market research consultation and related services, and market research studies. Complainant has registered the MORPACE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,603,195, registered Apr. 7, 2009), which demonstrates its rights in the mark. Respondent’s domain is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the letters “inc,” a designation Complainant often uses to indicate its status as a corporation.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the terms of the domain name, and Complainant has not granted permission to Respondent to use the MORPACE mark. Further, Respondent is not using the domain name
in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name in conjunction with a website and e-mail address to advertise fake market research survey opportunities for the purpose of confusing and defrauding consumers. Specifically, Respondent sends e-mails, inviting consumers to participate in a market survey project in exchange for receiving a fee. The e-mail instructs the consumer to cash a check, keep a portion of the proceeds, and “appear as a potential customer” and visit a Moneygram Store and transfer the balance of the funds to “Thomas Carter” in Rogers, Texas.
Respondent registered and is using the domain name in bad faith. Respondent is using the domain name to defraud consumers. Also, Respondent’s resolving website was taken down on July 30, 2016, and the domain name was immediately reregistered using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Morpace International, Inc. of Farmington Hills, MI, USA. Complainant is the owner of the domestic registration for the mark MORPACE, which it has used continuously since at least as early as 1990 in connection with its provision of business, marketing and advertising goods and services.
Respondent is Paul Mayer of Glen NH, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ. The Panel notes that the domain name was registered on or about August 1, 2016.
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(f), 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 (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.”).
Complainant uses its MORPACE mark in conjunction with its business of providing services that include, but are not limited to, conducting business and market research surveys, market research and analysis, market research, market research consultation and related services, and market research studies. Complainant has registered the MORPACE mark with the USPTO (Reg. No. 3,603,195, registered Apr. 7, 2009), which Complainant argues demonstrates its rights in the mark. Trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the letters “inc,” a designation Complainant often uses to indicate its status as a corporation. The Panel also notes that the “.com” generic top-level domain (“gTLD”) is affixed to the domain name. Prior panels have decided that neither the addition of the term “inc,” nor the affixation of the “.com” gTLD, serves to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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 (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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant argues that Respondent is not commonly known by the terms of the domain name, and that Complainant has not granted permission to Respondent to use the MORPACE mark. The Panel notes that the WHOIS information lists “Paul Mayer” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC name v. Snowden, FA 715089 (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).
Complainant argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, according to Complainant, Respondent uses the domain name in conjunction with a website and e-mail address to advertise fake market research survey opportunities for the purpose of confusing and defrauding consumers. Specifically, Complainant alleges that Respondent sends e-mails, inviting consumers to participate in a market survey project in exchange for receiving a fee. Complainant contends that the e-mail instructs the consumer to cash a check, keep a portion of the proceeds, and “appear as a potential customer” and visit a Moneygram Store and transfer the balance of the funds to “Thomas Carter” in Rogers, Texas. Past panels have held that a respondent lacks rights and legitimate interests in a domain name where it uses the domain name to engage in illegal activity. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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)). The Panel here finds that Respondent’s behavior, as described, indicates a lack of rights and legitimate interests in the domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain name.
The Complainant has proven this element.
Complainant claims, and Respondent has not disputed the assertion, that Respondent is using the domain name to defraud consumers. Previous panels have determined that a respondent’s use of a fraudulent website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The Panel here finds that Complainant’s contention indicates that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s resolving website was taken down on July 30, 2016, and that the domain name was immediately reregistered using a privacy service. The totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). The Panel here finds that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and therefore supports the conclusion that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <morpaceinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 6, 2016
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