Ontel Products Corporation v. ming li
Claim Number: FA1712001761849
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is ming li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <magictracksbuy.com> (the Domain Name), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2017; the Forum received payment on December 7, 2017.
On December 8, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <magictracksbuy.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@magictracksbuy.com. Also on December 11, 2017, 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 January 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant owns the trade mark MAGIC TRACKS, registered inter alia in the USA for toy racetracks and accessories, such as toy cars, as of February 14, 2017. It owns the domain names magictracks.com, magictracksstore.com and buymagictracks.com.
The Domain Name was registered in April 2017 without Complainant’s knowledge or permission. It resolves to a web site offering for sale unauthorised non authentic MAGIC TRACKS toy race tracks and accessories which mimic Complainant’s web sites using Complainant’s official logo, copyrighted pictures belonging to Complainant and a confusing variation of Complainant’s domain name buymagictracks.com where ‘buy’ is moved to the end of the Domain Name.
The Domain Name is confusingly similar to Complainant’s registered MAGIC TRACKS mark containing it in its entirety and simply adding ‘buy’ which only further suggests it is affiliated with Complainant.
Respondent is not commonly known by the Domain Name or ‘magic tracks’. Use of a registered mark on a web site mimicking that of the trade mark owned to sell competing unauthorised counterfeit products is not a bona fide offering of goods and services, nor a legitimate non commercial or fair use. It is, however, bad faith by disrupting the business of a competitor and to create confusion on the Internet and pass off for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the trade mark MAGIC TRACKS, registered inter alia in the USA for toy racetracks and accessories, such as toy cars, with first use recorded as July 2016. It owns the domain names magictracks.com, magictracksstore.com and buymagictracks.com.
The Domain Name has been used to point to a site mimicking the official site of Complainant and using the official logo of Complainant and copyrighted photographs belonging to Complainant to sell counterfeit products.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s MAGIC TRACKS mark (registered in the USA for toy racetracks and accessories with first use recorded as 2016), the generic term ‘buy’ and the gTLD .com.
The addition of the generic word ‘buy’ does not serve to distinguish the Domain Name from Complainant’s MAGIC TRACKS mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). )
The gTLD .com does not serve to distinguish the Domain Name from the MAGIC TRACKS mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by MAGIC TRACKS Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark. See Coryn Group Inc. v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because ‘Respondent is competing in the same industry as Complainant and under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc., FA 113961 (Forum July 16, 2002)
It is clear from the evidence that Respondent has used the site attached to the Domain Name to purport to sell genuine MAGIC TRACKS products, but in fact is offering goods which are not connected with Complainant. Use of Complainant’s mark to sell toys not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant of the site attached to the Domain Name or the goods supplied and offering of counterfeit goods and passing off is illegal. As such it cannot amount to the bona fide offering of goods and services. See Nokia Corp v Eagle, FA 1125685 (Forum Feb 7, 2008)(finding use to pass off as Complainant to sell unauthorised products mimicking those of Complainant was not a bona fide offering of goods and services or a legitimate non commercial or fair use.)
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above Respondent's use of the site is commercial and it is using the site to make a profit from competing goods not associated with Complainant in a confusing manner, passing off and selling counterfeit goods mimicking those of Complainant. The usage of Complainant’s official logo and images the copyright of which belongs to Complainant on the site connected to the Domain Name and offering of counterfeit versions of Complainant’s products confirms that Respondent is aware of Complainant and its business, rights and products. It seems clear that the use of Complainant’s mark in the Domain Name and official logo on the site attached to the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and goods.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site and the goods offered on it. This also appears designed to disrupt the business of a competitor. See H-D USA LLC v Linchunming, FA141100159214 (Forum Dec 22, 2014)(promoting counterfeit goods like those offered by Complainant disrupts complainant’s business and demonstrates bad faith under Policy 4 (b)(iii).) See also H-D Michigan, LLC v Ross, FA 1250712 (Forum Apr 23, 2009)(selling counterfeit goods created the likelihood of confusion as to Complainant’s affiliation with the domain name and allows Respondent to profit from that confusion contravening Policy 4 (b)(iv)).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <magictracksbuy.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 10, 2018
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