Marine Travelift, Inc. v. Ellsen Lilian
Claim Number: FA2108001958337
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 <marinetravellifts.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 August 5, 2021; the Forum received payment on August 5, 2021.
On August 6, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <marinetravellifts.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 August 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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 firstname.lastname@example.org. Also on August 9, 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 September 2, 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. 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.
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 also has owned the <marinetravelifts.com> domain name since October 1, 2016 and uses this domain name to re-direct consumers to Complainant’s primary website. Complainant has rights in the MARINE TRAVELIFT mark through its registration in the United States in 1984.
Complainant alleges that the disputed domain name is identical or confusingly similar to its MARINE TRAVELIFT mark, as it consists of a misspelling of the mark, merely adding an addition “L” within the mark, the letter “S” after the mark, and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MARINE TRAVELIFT mark. Additionally, Respondent fails to use the disputed domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to promote and allegedly sell equipment that competes directly with Complainant’s business. Specifically, Complainant states: “Respondent claims to be ‘marine travel lifts,’ a Chinese-based company that ‘produce[s] hydraulic marine travel lifts,’ ‘marine boat hoist’ products, and ‘boat travel lifts.’ Respondent does not in fact sell Complainant’s goods. The use of MARINE TRAVELIFT on its website therefore constitutes trademark infringement.” Additionally, the disputed domain name constitutes typosquatting of Complainant’s mark.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Complainant states: “Complainant recently prevailed in a separate UDRP action against the same Respondent in this action involving the nearly identical <marinetravellift.com> domain name (the ‘Previously Transferred Domain Name’), See Marine Travelift, Inc. v. Ellsen Lilian, FA2106001950751 (Forum July 8, 2021). In the prior UDRP action, the subject domain name website mimicked portions of Complainant’s website by containing photographs taken without authorization from Complainant’s website, thus infringing Complainant’s copyrights.” Respondent’s use of the resolving website after removal of its nearly identical website at the Previously Transferred Domain Name suffices for a finding of bad faith under the Policy.
Complainant further states that Respondent uses the disputed domain name to promote and sell products which compete with those offered by Complainant, disrupting Complainant’s business and likely leading to commercial gain for Respondent. The disputed domain name also constitutes typosquatting, which provides additional evidence of bad faith. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MARINE TRAVELIFT mark.
Respondent failed to submit a Response in this proceeding.
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 on February 1, 2018. Respondent registered the domain name <marinetravellift.com> on December 17, 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website prominently features the business name “Aircrane” and describes and offers to sell “Travel Lifts” and “Marine Travel Lifts”. Specific products labeled “Aircrane MBH Travel Lift”, “Aircrane MBH Boat Lift”, etc. are described and offered for sale.
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 disputed domain name consists of a misspelling of Complainant’s MARINE TRAVELIFT mark, only differing by adding an extra “L,” the letter “S” after the mark, and the “.com” gTLD. Such changes do not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, it must prove that the disputed domain name is not used for a bona fide offer of goods or services.
Here, the disputed domain name consists of the generic terms “marine travel lifts”. The term “travel lift” is a generic term that describes a certain type of hoist, often used for boats and in marinas[i]. Thus the disputed domain name is not so much a misspelling of Complainant’s mark, as a description of certain products.
According to 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
Past panels have found that, when a disputed domain name describes a Respondent’s business, it is used for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Peoples Bank of Mississippi v. Domain Admin / Xedoc Holding SA, FA2007001906337 (Forum Nov. 11, 2020) (“there is “a conceptual connection between the descriptive words ‘Peoples Bank’ and [Respondent’s] credit checking services thus further supporting its bona fide use.”); see also Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that the respondent's operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Complainant does not contest that Respondent actually markets boat lifts and boat hoists. The previous case cited by Complainant, Marine Travelift, Inc. v. Ellsen Lilian, FA2106001950751 (Forum July 8, 2021), must be distinguished from the instant case because, in the previous case, the resolving website displayed images taken without authorization from Complainant’s website, whereas Complainant does not allege – much less provide evidence to prove – that such is the case here.
Complainant alleges that Respondent’s use of the resolving website after removal of its nearly identical website at the Previously Transferred Domain Name suffices for a finding of bad faith under the Policy, but it fails to note that the Previously Transferred Domain Name was registered in December 2018, many months after the registration of the disputed domain name. As noted above, Complainant does not allege – much less provide evidence to prove – that the resolving website for the disputed domain name ever displayed the offending content that was displayed by the resolving website of the Previously Transferred Domain Name. Thus, Complainant has not shown that, unlike in the previous case, Respondent registered and used the disputed domain name to capitalize on the reputation and goodwill inherent in Complainant’s mark.
Complainant alleges that Respondent claims to be ‘marine travel lifts’ and that the use of MARINE TRAVELIFT on its website therefore constitutes trademark infringement. Having carefully reviewed the evidence submitted by Complainant, the Panel finds that Respondent clearly and prominently claims to be “Aircrane” and that it uses the terms “marine travel lifts” and “a marine travel lift” to describe certain generic products, which it sells under its own “Aircrane” name.
Finally, the Panel notes that the instant Complaint was filed three years after the registration of the disputed domain name, and this weakens Complainant’s arguments. See 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).
For all the above reasons, the Panel finds that Complainant has failed to satisfy its burden of proving that Respondent does not have a legitimate interest in the disputed domain name.
Since the Panel has found that Complainant has failed to satisfy its burden of proof for the second element of the Policy, it need not rule on the third element. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <marinetravellifts.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: September 3, 2021
[i] See for example : https://en.wikipedia.org/wiki/Travel_lift
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