Mueller Supply Company, Inc. d/b/a Mueller, Inc. v. Domain Admin / Domain Registries Foundation
Claim Number: FA2103001937118
Complainant is Mueller Supply Company, Inc. d/b/a Mueller, Inc. (“Complainant”), represented by Jason R. Fulmer of Foley & Lardner LLP, Texas, USA. Respondent is Domain Admin / Domain Registries Foundation (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mullerinc.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 19, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mullerinc.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 March 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2021 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@mullerinc.com. Also on March 24, 2021, 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 April 15, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a leading manufacturer of steel buildings and residential metal roofing in Texas and the Southwest United States. Complainant has common law trademark rights in the MUELLER, INC. mark through Complainant’s longstanding use of the mark, Complainant’s identical domain name, and the widespread recognition of Complainant’s mark. Respondent’s <mullerinc.com> domain name is confusingly similar to Complainant’s MUELLER, INC. mark as it merely omits the initial letter “E” in “Mueller”.
Respondent lacks rights or legitimate interests in the <mullerinc.com> domain name. Respondent has not been commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s MUELLER, INC. mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with competitive hyperlinks.
Respondent registered and uses the <mullerinc.com> domain name in bad faith. First, Respondent uses the disputed domain name to divert Internet users. Furthermore, Respondent had constructive knowledge of Complainant’s rights in the MUELLER, INC. mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark. Finally, Respondent is engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading manufacturer of steel buildings and residential metal roofing in Texas and the Southwest United States.
2. Complainant has established its common law trademark rights to MUELLER, INC. mark.
3. Respondent registered the <mullerinc.com> domain name on October 4, 2002.
4. Respondent uses the disputed domain name to divert internet users to its website and to resolve to hyperlinks offering competing goods and services to those of 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."
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law trademark rights in the MUELLER, INC. mark through Complainant’s longstanding use of the mark, Complainant’s identical domain name, and the widespread recognition of Complainant’s mark. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here. Complainant highlights that Complainant has been providing quality metal products to customers for over 85 years, and has used continuously in commerce, and is currently using, the trademark “MUELLER, INC.” See Compl. Exhibit C. Complainant also argues that the “MUELLER, INC.” name and brand has become synonymous with high quality steel buildings and roofing goods/services and that Complainant operates its present website at <muellerinc.com>. See Compl. Exhibit B. Therefore, the Panel finds Complainant has demonstrated rights in the MUELLER, INC. mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MUELLER, INC. mark. Complainant argues Respondent’s <mullerinc.com> domain name is confusingly similar to Complainant’s MUELLER, INC. mark as it merely omits the initial letter “E” in “Mueller”. Omitting a letter from a mark while adding a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s MUELLER, INC. trademark and to use it in its domain name, omitting the letter “E” from the trademark;
(b) Respondent registered the <mullerinc.com> domain name on October 4, 2002;
(c) Respondent uses the disputed domain name to resolve to hyperlinks offering competing goods and services to those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <mullerinc.com> domain name as Respondent has not been commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s MUELLER, INC. mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Domain Admin / Domain Registries Foundation.,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the MUELLER, INC. mark. See Compl. Exhibit D. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <mullerinc.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with competitive hyperlinks. Using a disputed domain name in connection with competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots showing the disputed domain name resolves to a website which provides various links to third-party sites, including various sites for metal buildings and related products/services, which Complainant offers. See Compl. Exhibit E. Additionally, the website also includes links to Complainant’s competitors. See id. Complainant argues that Respondent is using the domain name at issue solely to obtain “referral” fees in connection with an “affiliate” type of marketing program. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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.
Secondly, Complainant also contends Respondent registered the <mullerinc.com> domain name in bad faith as Respondent had constructive knowledge of Complainant’s rights to the MUELLER, INC. mark prior to registration of the disputed domain name based on the famous nature of the mark. Although constructive knowledge of a mark is usually insufficient to demonstrate bad faith, worldwide prominence of a mark together with other circumstances can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant argues that Respondent had constructive knowledge of Complainant’s rights to the MUELLER, INC. mark prior to registration of the disputed domain name because at the time Respondent registered the domain name at issue, a search of the Internet would have revealed numerous hits and information concerning Complainant, its business and its Mueller, Inc. marks. As the Panel finds that Complainant’s mark is famous, and together with all the circumstances, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant argues Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Per Policy ¶ 4(a)(iii), the purposeful misspelling of a mark constitutes typosquatting which is itself evidence of bad faith. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Here, Complainant contends that Respondent engages in typosquatting by misspelling merely omitting the letter “E” in in the <mullerinc.com> domain name. Therefore, as the Panel agrees, it finds bad faith per Policy ¶ 4(a)(iii).
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 <mullerinc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 20, 2021
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