Mecal Machinery S.r.l. v. Milen Radumilo
Claim Number: FA2303002037007
Complainant is Mecal Machinery S.r.l. (“Complainant”), represented by Mrs. Elena Pagani, Italy. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mecall.us>, registered with CommuniGal Communication Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on March 23, 2023; Forum received payment on March 23, 2023.
On March 24, 2023, CommuniGal Communication Ltd. confirmed by e-mail to Forum that the <mecall.us> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accord with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2023 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@mecall.us. Also on March 28, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 specializes in the production and marketing of machines and systems for processing aluminum, PVC and light alloys.
Complainant holds a registration for the MECAL mark, which is on file as an international trademark as Registry No. 1,286,889, registered on September 25, 2015.
Complainant conducts business online at the addresses <mecal.com> and <mecal.it>.
Respondent registered the domain name <mecall.us> on February 18, 2023.
The domain name is confusingly similar to Complainant’s MECAL mark.
Respondent has no relationship with Complainant.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise authorized by Complainant to use the MECAL mark in a domain name.
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or any non-commercial use.
Respondent makes no active use of the domain name.
Instead, the domain name resolves to a parking page at which it is offered for sale at a price of USD $3,523.00.
Respondent acquired the domain name primarily with the intent, ultimately, to offer it for sale to Complainant.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has shown a pattern of bad faith domain name registrations.
Respondent knew of Complainant’s rights to the MECAL mark prior to registration of the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name was registered or is being used by Respondent in bad faith.
In view of the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent, as applicable, in rendering its decision.
By reason of its registration of the MECAL trademark with an international trademark authority, Complainant has shown that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018):
Registration of a mark with [one or more] governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <mecall.us> domain name is confusingly similar to Complainant’s MECAL trademark. The domain name incorporates the mark in its entirety, with only the addition to the mark of an extraneous second letter “l” and the country code Top Level Domain (“ccTLD”) “.us,” for United States. See, for example, Lucasfilm Entertainment Company Ltd. LLC v. George Ring, FA 1673825 (Forum June 7, 2016) (finding that, where a respondent’s <lukasfilm.com> domain name incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark). Here Respondent’s addition of a second letter “l” to Complainant’s MECAL mark does not change the phonetic character of the resulting domain name and so leaves the mark clearly identifiable within it.
As to Respondent’s addition of the country code “.us” to Complainant’s mark in forming the challenged domain name, that alteration of the mark is of no moment to our analysis of the question of confusing similarity. Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy¶4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy¶4(a)(i) analysis because domain name syntax requires TLDs.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain name <mecall.us>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy¶4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the domain name that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <mecall.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy¶4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights or legitimate interests in that domain name under Policy¶4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that Respondent makes no active use of the <mecall.us> domain name (a practice called “passive holding”). Because Respondent makes no active use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy¶4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We turn then to Complainant’s contention, which Respondent, once again, does not deny, that Respondent has not been commonly known by the <mecall.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Milen Radumilo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent evidently does not make any active use of the <mecall.us> domain name, but instead offers it for sale at a price demonstrably in excess of its likely cost of acquisition, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it, without intent for commercial gain, within the meaning of Policy¶4(c)(iv).
See, for example, Twentieth Century Fox Film Corporation v. Diego Ossa, FA1602016 (Forum February 26, 2015):
The resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the … domain name, and finds that such behavior provides additional evidence that Respondent lacks rights [to] or legitimate interests in the … domain name.
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
The available evidence indicates that Respondent registered the domain name <mecall.us> primarily, if not solely, for the purpose of selling it for a price in excess of its cost of acquisition. The evidence also shows that Respondent has been a respondent in more than 175 cybersquatting cases worldwide that have resulted in determinations that it registered and used one or more domain names in bad faith. On this uncontested record, we conclude that Respondent is not a legitimate domain name reseller, the business of which may be permissible under the Policy, but rather a serial domain name abuser. This is squarely within the definition of bad faith. The record therefore supports the conclusion that Respondent both registered and now uses the domain name here in issue in bad faith. See, for example, Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018):
A search at the ADR FORUM, …, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer [disputed domain names]…. [Therefore,] Respondent registered and used the disputed domain name [at issue in this proceeding] in bad faith ….
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <mecall.us> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 2, 2023
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