Masonite International Corporation and Masonite Corporation v. Babatunde Pelaiye
Claim Number: FA2010001918630
Complainant is Masonite International Corporation and Masonite Corporation (“Complainant”), represented by Joseph W. Berenato of Berenato & White, LLC, United States. Respondent is Babatunde Pelaiye (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masonite.me>, registered with NameSilo, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2020; the Forum received payment on October 28, 2020.
On October 28, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <masonite.me> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2020 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@masonite.me. Also on November 4, 2020, 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 November 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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
Complainants, who are within the same group of corporations, assert rights in the MASONITE trademark and service mark established through their ownership of the below mentioned portfolios of registrations and their extensive use of the mark in their building providers business which has grown from its inception in 1926 to having stated net sales of $2.2 billion in the fiscal year in 2019.
Complainants allege that the disputed domain name <masonite.me> is confusingly similar to Complainants’ MASONITE trademark as they are identical, the disputed domain name adding only the (“ccTLD”) extension <.me>.
Complainants submit that the addition of the <.me> country code Top Level Domain (“ccTLD”) extension does not avoid likely confusion with Complainants’ well-known MASONITE mark. See AOL LLC v Andrew Macnamra, FA 0906001267812 (Forum July 8, 2009) (transferring <aol4.me> and finding that “[t]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
Complainants submit that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence suggesting Respondent is commonly known as MASONITE arguing that the name MASONITE does not appear in the WHOIS information for <masonite.me>. See NYX, Los Angeles Inc. v. AppServDomain.com, FA 1301001478206 (Forum Feb. 18, 2013) (citing Coppertown Drive-Thru Sys., LLC 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).
Complainants assert that Respondent is not a licensee or subsidiary of either Complainant and that Respondent has never been authorized to use Complainants’ MASONITE trademark. Nor have Complainants authorized or licensed Respondent to supply financial services under the MASONITE mark. 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).
Complainants further submit that Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods and services or made a noncommercial or fair use of the domain name but instead that Respondent is using the disputed domain name to divert and redirect Internet users to financial services not owned by or associated with Complainants.
Complainants allege that upon information and belief, Respondent derives commercial benefit from his use of the disputed domain name which is identical or confusingly similar to Complainants’ MASONITE mark as he is using the disputed domain name to attract Internet users and direct them for Respondent’s benefit. Complainants submit that such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Priceline.com LLC v. levesque, Bruno, FA 1506001625137 (Forum Jul. 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainants submit that the disputed domain name was registered and is being used in bad faith.
Complainant allege that given the length and breadth of Complainants’ use and protection for the MASONITE trademark, it cannot reasonably be denied that Respondent had actual prior knowledge of Complainants’ rights in MASONITE when he Respondent registered the disputed domain name.
Complainants add that Respondent’s use of Complainants’ mark for services not associated with Complainants’ mark could not have been coincidental and referring to the screenshot of the website to which the disputed domain name resolves argues that Respondent’s use of Complainants’ mark for services while referencing Complainants’ goods demonstrates that Respondent knew of Complainants’ rights in the mark and attempted, in bad faith, to profit off of those rights.
Complainants argue that it is inconceivable that Respondent registered <masonite.me> and used the domain in connection with financial or investment services associated with Complainants’ building products without learning that <masonite.com> was owned by Complainants. See Sony Kabushiki Kaisha TA Sony Corp. v. Isabella Wempa, FA 1205001443142 (Forum June 19, 2012) (“The Panel, however, finds that actual knowledge is shown by Respondent’s acquisition and use of the disputed domain name and that this actual knowledge does support a finding of bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainants conclude that that Respondent has registered or acquired the <masonite.me> domain name primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the site.
Complainants refer to a screenshot of the website to which the disputed domain name resolves which prominently displays the MASONITE name and mark as well as Complainants’ distinctive letter M stylized mark, purporting to offer financial services specifically loans, and includes the following text: “Masonite is the true door category leader-the only door manufacturer to serve both the residential and architectural markets…”.
Complainants allege that the screenshot shows that Respondent is using the disputed domain name in bad faith purporting to imply that the financial services offered on the website is associated with Complainant in some “official” capacity. Complainants deny that there is any such relationship and allege that Respondent is intentionally seeking to confuse internet users with an affiliation between Complainant and Respondent for purposes of accepting money.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The second Complainant is a wholly owned subsidiary of the first Complainant (together “Complainants “) manufacture, sell, and distribute building products including a range of goods and provide services which they identify using the MASONITE trademark and service mark.
The first Complainant is the owner of a portfolio of registered trademarks that includes:
· United States registered trademark MASONITE and Design, registration No. 3,114,553, registered on the Principal Register on July 11, 2006 for goods in international classes 6, 19 and 20;
· United States registered trademark MASONITE, registration number 3,080,084 , registered on the Principal Register on April 11, 2006 for goods in international classes 6 and19;
· United States registered trademark MASONITE, registration number 3,867,989, registered on the Principal Register on October 26, 2010, for goods in international class 2;
· United States registered service mark MASONITE COORDINATES, registration number 4,204,693, registered on the Principal Register on September 11, 2012 for services in international class 40;
· United States registered trademark GET MORE FROM MASONITE, registration number 4,049,499, registered on the Principal Register on November 1, 2011, for goods in international classes 6 and 19;
· United States registered MASONITE THE BEAUTIFUL DOOR, registration number 2,832,827, registered on the Principal Register on April 13, 2004 for goods in international classes 6 and 19.
Also of relevance in this Compliant is that the first named Complainant is the owner of:
· United States registered trademark and service mark M (stylized), registration number 5,287,561, registered on the Principal Register on September 12, 2017 for goods and services in international classes6, 19, 35, 41, and 45.
The second Complainant is the owner of:
· United States registered trademark MASONITE, registration number 248,040, registered on October 16, 1928, and currently on the Principal Register for goods in international classes 6, 17 and 19;
· United States registered service mark MASONITE, registration number 4,341,251, registered on the Principal Register on May 28, 2013, for services in international classes 35, 41 and 45;
· United States registered service mark MASONITE DOORS, registration number 4,341,252, registered on the Principal Register May 28, 2013, for services in international classes 35, 41 and 45.
Complainant maintains an Internet and social media presence with a website to which its Internet domain name <masonite.com> resolves and social media at <blog.masonite.com>, <facebook.com/masonitedoors>, <pinterest.com/masonitedoors/>, and <twitter.com/masonitedoors>.
The disputed domain name was registered on August 20, 2021 and resolves to a website that purports to offer financial services, specifically loans.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the request by the Forum for verification information relating to the registration of the disputed domain name. The Registrar disclose the identity of Respondent as the registrant in response to said request. Respondent had availed of a privacy service to conceal his identity of the published WhoIs.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainants have adduced clear, convincing and uncontested evidence of their respective rights in the MASONITE trademark and service mark established through their ownership of the above-mentioned portfolios of registrations and extensive use of the mark by their group of corporations in their building providers business which has grown from its inception in 1926 to having stated net sales of $2.2 billion in the fiscal year in 2019.
The disputed domain name is identical to Complainant’s trademark.
The ccTLD extension <.me> may be ignored for the purposes of comparison because it would be perceived as merely a technical necessity for the disputed domain name.
As this Panel has found that that the disputed domain name is identical to the MASONITE trademark and service mark in which Complainants have rights, Complainants have succeeded in the first element of the test in first element of the test in Policy ¶ 4(a)(i).
Complainants have made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that there is no evidence suggesting Respondent is commonly known as MASONITE. Complainant submits that that name MASONITE does not appear in the WHOIS information for <masonite.me>;
· that Respondent’s website does not include the MASONITE mark, other than in the domain name;
· that Respondent is not a licensee or subsidiary of either Complainant;
· that Respondent has never been authorized to use Complainants’ MASONITE trademark;
· that neither Complainant has authorized or licensed Respondent to supply financial services under the MASONITE mark;
· that Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offer of goods and services or noncommercial or fair use of the domain name;
· that Respondent is using the disputed domain name to divert and redirect Internet users to financial services not owned by or associated with Complainants; and
· that upon information and belief, Respondent derives commercial benefit from his use of the disputed domain name which is identical or confusingly similar to Complainants’ MASONITE mark as he is using the disputed domain name to attract Internet users and direct them for Respondent’s benefit which use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
It is well established that where Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that, on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the length and extent of Complainants’ use of the MASONITE trademark, as Complainants have submitted, on the balance of probabilities the registrant of the disputed domain name had knowledge of Complainants’ name, website, MASONITE mark and the goodwill and reputation associated therewith when the disputed domain name was chosen and registered.
MASONITE is distinctive trademark and it is improbable that anyone would choose and register it other than to create an association with Complainants and their business.
This Panel finds therefore that the disputed domain name was registered in bad faith in order to target and take predatory advantage of Complainants, their mark, goodwill and reputation.
This finding is supported by the manner in which the disputed domain name has since been used. The screenshot of the website to which the disputed domain name resolves illustrates that Respondent has sought to create the impression that there is an association with Complainants and their building supplies business.
Respondent’s website prominently displays the MASONITE name and mark as well as Complainants’ distinctive letter M stylized mark, purporting to offer financial services specifically loans, and includes the following text: “Masonite is the true door category leader-the only door manufacturer to serve both the residential and architectural markets…”.
This panel finds therefore that Respondent is using the disputed domain name for the purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the services that Respondent purports to offer on the site.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Complainants are entitled to the remedy requested in the Complaint at the disputed domain name be transferred to the first Complainant, Masonite International Corporation.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <masonite.me> domain name be TRANSFERRED from Respondent to Complainant, Masonite International Corporation.
______________________________________
James Bridgeman SC
Panelist
Dated: November 27, 2020
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