DECISION

 

MVW Holdings, Inc. v. [Redacted] / Magna-Tiles

Claim Number: FA2509002178654

 

PARTIES

Complainant is MVW Holdings, Inc. ("Complainant"), represented by Joanna M. Myers of Howard & Howard Attorneys PLLC, Nevada, USA. Respondent is [Redacted] / Magna-Tiles ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <magnatiles-enforcement.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 23, 2025; Forum received payment on September 23, 2025.

 

On September 24, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <magnatiles-enforcement.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 September 30, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2025 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@magnatiles-enforcement.com. Also on September 30, 2025, 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 October 21, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: Identity Theft

Complainant contends that the named Registrant, [redacted], is an employee of Complainant, but was not involved in the registration of the disputed domain name. Complainant is informed and believes that Respondent unlawfully misappropriated the name of [redacted] for the purpose of registering the mark and perpetrating a fraud on Complainant and/or Complainant's consumers. Respondent also falsely identified MAGNA-TILES as the Registrant's "Organization," and used Complainant's address, while neither [redacted] nor Complainant had any participation in or knowledge of the registration of the disputed domain name.

The Panel finds that Complainant's assertions and the surrounding circumstances are substantiated by the evidence submitted. Accordingly, the Panel acknowledges that Respondent's identity was misappropriated by a third party, and decides to redact Respondent's name in order to safeguard his/her identity and personal information.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a leading manufacturer and supplier of construction toys and related goods worldwide, which it offers under its famous MAGNA-TILES marks. Complainant holds rights in the MAGNA-TILES mark by virtue of trademark registrations, including registration with the USPTO (Reg. No. 2,654,320, registered November 26, 2002). Through extensive advertising and promotional efforts, Complainant has built substantial goodwill and brand recognition in the MAGNA-TILES marks. The disputed domain name is confusingly similar to the MAGNA-TILES mark, as it wholly incorporates the mark and merely appends the descriptive or generic term "enforcement" and the ".com" gTLD.

 

ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has neither been authorized nor licensed to use Complainant's MAGNA-TILES mark and is not commonly known by the disputed domain name. The named Registrant, [redacted], is an employee of Complainant, but was not involved in the registration of the disputed domain name. Complainant is informed and believes that Respondent unlawfully misappropriated the name of [redacted] for the purpose of registering the mark and perpetrating a fraud on Complainant and/or Complainant's consumers. Respondent also falsely identified MAGNA-TILES as [redacted]'s "Organization," and used Complainant's address, while neither [redacted] nor Complainant had any participation in or knowledge of the registration of the disputed domain name.

 

iii) Respondent registered and is using the disputed domain name in bad faith. At the time of registration and use, Respondent had constructive knowledge of Complainant's rights in the MAGNA-TILES mark, and the passive holding of the disputed domain name constitutes further evidence of bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 29, 2025.

 

2. Complainant has established rights in the MAGNA-TILES mark by virtue of trademark registrations, including registration with the USPTO (Reg. No. 2,654,320, registered November 26, 2002).

 

3. The named Registrant, [redacted], is an employee of Complainant, but was not involved in the registration of the disputed domain name.

 

4. The named Registrant's organization was falsely indicated as Complainant's name.

 

5. The disputed domain name currently resolves to an inactive webpage.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the MAGNA-TILES mark by virtue of trademark registrations, including registration with the USPTO (Reg. No. 2,654,320, registered November 26, 2002). Registration of a trademark with a national authority is sufficient to confer rights in the mark for the purposes of the Policy. In light of the evidence provided, the Panel finds that Complainant has demonstrated rights in the MAGNA-TILES mark under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <magnatiles-enforcement.com> is confusingly similar to the MAGNA-TILES mark, as it fully incorporates the mark and merely appends the descriptive or generic term "enforcement" and the ".com" gTLD. It is well established that when a domain name incorporates a trademark in its entirety, the addition of generic terms or a gTLD does not negate a finding of confusing similarity. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's MAGNA-TILES mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, has not been authorized by Complainant to use Complainant's mark, and is not affiliated with Complainant. Relevant information, such as WHOIS records, may serve as evidence to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the named Registrant, [redacted], is an employee of Complainant, but was not involved in the registration of the disputed domain name, and that the named Registrant's organization was falsely indicated as Complainant's name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

The Panel finds that Respondent misappropriated Complainant's employee's name and used it as the Registrant of the disputed domain name, while also falsely identifying Complainant as the organization. Such misappropriation strongly suggests that Respondent registered the disputed domain name for fraudulent or deceptive purposes, including the potential use of Complainant's and its employee's names in associated email addresses. Registering a domain name for such improper or fraudulent purposes, and passively holding it without any bona fide use, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it qualify as legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").

Complainant has submitted a screenshot demonstrating that the disputed domain name does not resolve to an active or functioning webpage. The Panel therefore finds that Respondent has failed to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

Accordingly, the Panel finds that Complainant has established a prima facie case based on the foregoing considerations. All relevant factors support a finding that Complainant has met its burden under the prima facie standard. As Respondent has neither submitted a Response nor made any attempt to rebut the prima facie case, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

The Panel notes that the disputed domain name does not resolve to a functioning website. The Panel observes that the passive holding of a domain name does not necessarily preclude a finding of bad faith use under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) ("finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith.").

 

The particular circumstances of this case that the Panel has taken into account include:

 

i) As a result of Complainant's substantial advertising and promotional activities, Complainant's mark has acquired significant goodwill and consumer recognition globally. Since Complainant and/or its predecessor in interest has used the MAGNA-TILES marks in commerce since as early as December 1995, Complainant has spent substantial sums of money to register, advertise, and promote its MAGNA-TILES marks in print, broadcast media, and on the Internet through social media and its website. Accordingly, MAGNA-TILES is considered a well-known trademark; and

 

ii) Respondent has submitted no evidence of any actual or contemplated bona fide use of the disputed domain name; and

 

iii) Respondent misappropriated Complainant's employee's name and used it as the Registrant of the disputed domain name, while also falsely identifying Complainant as the organization. Such misappropriation strongly suggests that Respondent registered the disputed domain name for fraudulent or deceptive purposes, including the potential use of Complainant's and its employee's names in associated email addresses.

 

Taking into account the totality of these circumstances, the Panel finds that Respondent's passive holding of the disputed domain name constitutes bad faith under paragraph 4(a)(iii) of the Policy, and that Respondent registered and uses the disputed domain name in bad faith.

 

Complainant further contends that Respondent registered and uses the disputed domain name in bad faith because Respondent had constructive knowledge of Complainant's rights in the MAGNA-TILES mark at the time of registration. While UDRP precedent does not recognize constructive knowledge alone as a basis for a finding of bad faith, actual knowledge may suffice to support such a finding under Policy ¶ 4(b)(iii). See 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 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).").

 

The Panel infers from the notoriety of Complainant's mark and the fact that Respondent misappropriated Complainant's employee's name and used it as the Registrant of the disputed domain name, while also falsely identifying Complainant as the organization, that Respondent had actual knowledge of Complainant's rights at the time of registration, which supports a finding of bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <magnatiles-enforcement.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: October 22, 2025