Marine Travelift, Inc. v. Ellsen Lilian
Claim Number: FA2106001950751
Complainant is Marine Travelift, Inc. (“Complainant”), represented by Thomas A Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Ellsen Lilian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marinetravellift.com>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2021; the Forum received payment on June 11, 2021.
On June 14, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <marinetravellift.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@marinetravellift.com. Also on June 18, 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.
A timely Response was received and determined to be complete on July 6, 2021.
On July 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that, for more than a half century, it has been an industry-leading manufacturer of world-class mobile boat hoists, related products, and related services. Complainant was founded in 1954 and in 1965 began selling boat hoists under the MARINE TRAVELIFT trademark. Complainant sells and services boat hoists and related products under the MARINE TRAVELIFT mark throughout the United States and internationally, including in North America, Europe, Africa, Asia, Oceania, and South America. Complainant has used <marinetravelift.com> as its primary website since at least 2002. Complainant has rights in the MARINE TRAVELIFT mark through its registration in the United States in 1965. The mark is registered elsewhere around the world. Complainant and its mark are well known.
Complainant alleges that the disputed domain name is confusingly similar to its mark as it consists of a misspelling of its mark (an extra “L” is added), along with the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its MARINE TRAVELIFT mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but passed off as Complainant on the disputed domain name’s resolving website in order to promote competing products. Specifically, the resolving website mimicked portions of Complainant’s website by previously containing photographs taken without authorization from Complainant’s website. After Complainant informed the Registrar of that copyright infringement, Respondent removed the infringing photographs from the resolving website, which now purports to market products from one of Complainant’s competitors. Complainant still typosquats with the disputed domain name. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupted Complainant’s business for commercial gain by passing off as Complainant on the disputed domain name’s resolving website, and purports to market products from one of Complainant’s competitors. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MARINE TRAVELIFT mark. Respondent typosquats with the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent states that it has the right to use the disputed domain because it was registered in 2018. Further, Respondent states that it has now removed all images related to Complainant from the resolving website and now displays only images of its own products.
Complainant owns the mark MARINE TRAVELIFT and uses it market mobile boat hoists and related products and services. The mark is well known.
Complainant’s rights in its mark date back to 1965.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displayed, at one time, images of Complainant’s products taken from Complainant’s website. At present, it purports to market products that compete with 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.
The disputed domain name consists of a misspelling of Complainant’s MARINE TRAVELIFT mark (an extra “L” is added) with the addition of the “.com” gTLD. Under Policy ¶ 4(a)(i), the addition of one letter and a gTLD is generally insufficient in differentiating a domain name from the mark it incorporates. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (stating that the <blankofamerica.com> domain name is confusingly similar to the complainant’s BANK OF AMERICA trademark because, by adding the letter “l,” the domain name amounts to a common misspelling of the trademark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, may demonstrate that a Respondent is not commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Here, the WHOIS of record identifies the Registrant as “Ellsen Lilian”, while the response refers to Respondent as “Jack”, and “Aicrane” (this company appears to market products that compete with those of Complainant). Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website displayed images taken from Complainant’s website in violation of Complainant’s copyrights, and now purports to market products that compete with those of Complainant. This is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy. See Avery Kusmierski Singer v. Domain Administrator / See PrivacyGuardian.org, FA2012001923493 (Forum Jan. 5, 2021) (“Using a disputed domain name in connection with copyright violations 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 also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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)”). Therefore the Panel finds Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Further, Respondent typosquats with the disputed domain name, which differs from Complainant’s mark only by the addition of an extra letter “L”. Under Policy ¶ 4(a)(iii), typosquatting, or incorporating a slightly misspelled version of a mark into a domain name to divert internet users who mistakenly misspell the mark when searching for Complainant or Complainant’s website, is not generally considered indicative of rights or legitimate noncommercial or fair use. See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”). Therefore the Panel finds, on this ground also, that Respondent fails to use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Doctrine or Defense of Laches
Respondent appears to allege that, since the disputed domain name was registered some three years ago, in 2018, the registration was made in good faith. Thus, it appears to invoke the doctrine of laches.
The Panel considers it important to note that recent cases have begun to apply laches in contrast to earlier cases to the contrary, and the following cases have been considered in reaching this Panel’s determination regarding laches. See craigslist, Inc. v. Craig Solomon Online Services, FA 1445057 (Forum Aug. 13, 2012) (applying laches where local online operating business would be prejudiced by transfer after sophisticated Complainant’s unexplained delay); see also The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Forum Nov. 17, 2010) (Finding that “[a] small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”); cf., Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); City Bank v. Domain Admin / Inavit, Inc., FA 1564337 (Forum July 21, 2014) (Laches not reached, but noting that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name);Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith); see generally, Mile, Inc. v. Michael Burg, D2010-2011 (WIPO, February 7, 2011) (The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace); but see Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Indus., WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes); The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”); Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560 (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
Based on the foregoing, the Panel finds that although in appropriate cases the equitable defense of laches may apply, this is not one such case.
Respondent has not presented any explanation for its use of Complainant’s mark, other than that it was available. It does not deny knowing of Complainant, and indeed the evidence provided by Complainant shows that Respondent did know of Complainant and its products, because at one time the Resolving website displayed images of Complainant’s products, taken from Complainant’s website. For all these reasons, the Panel finds that Respondent registered the disputed domain name in bad faith in the sense of the Policy.
Indeed, as already noted, the resolving website purports to offer competing products. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Further, also as already noted, Respondent engages in typosquatting. Typosquatting, or incorporating a slightly misspelled version of a mark into a domain name to divert internet users who mistakenly misspell the mark when searching for Complainant or Complainant’s website, may be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: at one time, the resolving website displayed images of Complainant’s products, taken from Complainant’s website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marinetravellift.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 8, 2021
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