Monarch Computer Systems, Inc. v.
monarchcomputers c/o Administrator Domain
Claim
Number: FA0506000491696
Complainant is Monarch Computer Systems, Inc. (“Complainant”),
5242 Royal Woods Pkwy, Ste. 160, Tucker, GA 30084. Respondent is monarchcomputers
c/o Administrator Domain (“Respondent”), General Delivery, Georgetown
Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <monarchcomputers.com>, registered with Address
Creation.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James a. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 6, 2005.
On
June 16, 2005, Address Creation confirmed by e-mail to the National Arbitration
Forum that the domain name <monarchcomputers.com> is registered
with Address Creation and that Respondent is the current registrant of the
name. Address Creation has verified
that Respondent is bound by the Address Creation registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
June 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 6,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@monarchcomputers.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
July 11, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration 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 makes the following assertions:
1. Respondent’s <monarchcomputers.com>
domain name is confusingly similar to Complainant’s MONARCH COMPUTER SYSTEMS
and MONARCHCOMPUTER.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <monarchcomputers.com> domain name.
3. Respondent registered and used the <monarchcomputers.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been operating under the MONARCH COMPUTER SYSTEMS mark since June 15, 1995 and
has sold over $100 million worth of products.
It is currently in the top three sellers of AMD processors. Complainant’s website,
<monarchcomputer.com>, has been in operation since 1997. Since that date, Complainant has been using
the MONARCHCOMPUTER.COM mark in its logos, advertising, and promotions. The website currently receives approximately
1.7 million hits daily. Complainant is
featured on over fifty websites and advertises in fourteen trade print publications,
as well as in numerous online magazines and forums. Complainant has also received several industry awards for its
products.
Complainant has
routinely been displaying the MONARCH COMPUTER SYSTEMS and MONARCHCOMPUTER.COM
marks on its logos, products, packaging, advertising, and promotions. Additionally, Complainant has pending
trademark applications with the United States Patent and Trademark Office
(“USPTO”) for both marks (Ser. No. 78/455,763 filed on July 23, 2004; Ser. No.
78/574,497 filed on Feb. 24, 2005; 78/574,511 filed on Feb. 24, 2005;
78/455,788 filed on July 23, 2004).
Moreover, Complainant has trademark registrations in Georgia for both
the MONARCH COMPUTER SYSTEMS and MONARCHCOMPUTER.COM marks (E.g., Reg.
No. T-21822 issued Jan. 24, 2005; Reg. No. T-21821 issued Jan. 15, 2005).
Respondent
registered the <monarchcomputers.com> domain name on March 10,
2002. Respondent’s website initially
consisted of links to Complainant’s competitors, provided through Google’s
AdSense program. Complainant notified
Google regarding Respondent’s use of the AdSense program to profit from
Complainant’s misdirected customers.
Consequently, on February 23, 2005, Google removed Respondent’s domain
from the program. As a result, the
disputed domain name does not currently resolve to an active website. Nevertheless, Respondent chose to renew its
registration for the disputed domain name on May 4, 2005.
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.”
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(e), 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 and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent's failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the
absence of a response, it is appropriate to accept as true all allegations of
the Complaint.”).
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.
Complainant
alleges that it has common law rights in the MONARCH COMPTUER SYSTEMS and
MONARCHCOMPUTER.COM marks. Under Policy
¶ 4(a)(i), a mark need not be registered for Complainant to have rights in the
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy). Furthermore, a mark can acquire common law
rights if there is long and substantial use of the mark in connection with a
complainant’s business. See Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
To show common
law rights in the mark, Complainant has presented evidence indicating that it
has been using its marks since 1995, that Complainant has sold over $100
million in products under the marks, that Complainant’s website receives over
1.7 million hits daily, and that Complainant’s marks are featured in a
multitude of advertising publications and websites in connection with
Complainant’s business. Without a
response from Respondent, such evidence establishes that Complainant’s marks
have acquired secondary meaning. Thus,
the Panel concludes that Complainant has common law rights in the marks for
purposes of Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
Respondent’s
<monarchcomputers.com> domain name incorporates Complainant’s
MONARCHCOMPUTER.COM mark in its entirety and adds the letter “s.” The Panel finds that the addition of a
letter is insufficient to distinguish Respondent’s domain name from
Complainant’s mark. Thus, the disputed
domain name is confusingly similar to Complainant’s marks under Policy ¶
4(a)(i). See Nat’l Geographic Soc’y
v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding
that the domain name <nationalgeographics.com> was confusingly similar to
the complainant’s “National Geographic” mark); see also Cream Pie Club v.
Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (“The addition of an ‘s’
to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the
likelihood of confusion caused by the use of the remaining identical mark.”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<monarchcomputers.com> domain name. Because this assertion establishes a prima facie case, the
burden of proof shifts to Respondent to demonstrate that it does have rights or
legitimate interests in the domain name.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”).
Because
Respondent failed to submit a response, the Panel lacks any evidence that would
indicate that Respondent is commonly known by the disputed domain name. Without any such evidence, the Panel finds
that Respondent failed to meet its burden and has not established rights or
legitimate interests under Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail”); see also Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the panel with evidence to
suggest otherwise).
Moreover,
Complainant argues that Respondent does not have rights or legitimate interests
in the disputed domain name because Respondent has not demonstrated that it is
using the domain name in connection with 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).
Although Respondent’s website does not currently have any content, it
used to consist solely of links to Complainant’s competitors provided through
the Google AdSense program. Under the
AdSense Program, Respondent received payment for every user it successfully
redirected to Complainant’s competitors.
The Panel holds that such diversion does not constitute a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Additionally, Respondent’s failure to submit a response leads this Panel
to accept as true Complainant’s allegations regarding Respondent’s inability to
meet its burden under Policy ¶¶ 4(c)(i) and (iii). See Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given
Respondent’s failure to submit a substantive answer in a timely fashion, the
Panel accepts as true all of the allegations of the complaint.”).
Accordingly,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered and was using the confusingly similar <monarchcomputers.com>
domain name for commercial gain by creating a likelihood of confusion with
Complainant’s marks and taking advantage of this consumer confusion to earn
referral fees through Google’s AdSense program. Although Google has terminated Respondent’s participation in the
program in response to Complainant’s request, the Panel holds that Respondent’s
prior use of the disputed domain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
Furthermore, Complainant argues that Respondent’s prior use of the
disputed domain name to operate a website that featured links to Complainant’s
competitors constitutes disruption under Policy ¶ 4(b)(iii). The Panel holds that Respondent’s prior use
is disruptive and constitutes evidence that Respondent registered and was using
the disputed domain name in bad faith. See
EBAY,
Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Therefore,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <monarchcomputers.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
July 22, 2005
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