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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MC Enterprises v. Mark Segal (Namegiant.com)

Case No. D2005-1270

 

1. The Parties

The Complainant is MC Enterprises, of Oxnard, California, United States of America.

The Respondent is Mark Segal (Namegiant.com), of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <mcenterprises.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 9, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2006.

The Center appointed Mr. Edward Chiasson, Q.C. as the Sole Panelist in this matter on January 13, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.

 

4. Factual Background

Complainant

The following information derives from the Complainant.

The Complainant is a manufacturer of aftermarket motorcycle accessories sold under the MC Enterprises mark as well as an original equipment manufacturer (OEM) for American Suzuki Motor Corporation. The Complainant enjoys product distribution throughout the United States, Canada, Australia, the Caribbean and parts of Europe.

The company was founded in 1970, and has been in continuous operation since then. The Complainant is a DBA of parent company Western Manufacturing & Distributing, LLC which is incorporated in the State of California.

This Complaint is based upon common law trademark rights on the letters and word “MC Enterprises” which are used by the Complainant as its company name. Since its inception, for over 30 years the letters MC have stood for Motor Cycle. Under the mark, the company has achieved widespread recognition and the use of the mark has come to be recognized by the general public as indicating an association with motorcycle accessories produced exclusively by the Complainant. Moreover, the name MC Enterprises is a distinctive identifier associated with the Complainant’s products.

During late 2000 the Complainant made plans for a new website and found that its obvious first choice, “mcenteprises.com”, already was in use. The Complainant opted for “mcenterprisesusa.com”.

The Complainant checked the “mcenteprises.com” website from time to time for any activity but there was never anything more than a page indicating “under construction”.

In early May 2000, the Complainant noticed that the registrant at that time, Michael Carrillo, had placed a link on his still vacant home page directing interested parties to the Complainant’s “mcenterprisesusa.com” site along with a statement to the effect of “I am not the motorcycle parts manufacturer”.

On May 9, 2002, the Complainant contacted the technical contact for <mcenterprises.com> inquiring about the availability of the subject domain name. Later that day, the registrant, Michael Carrillo, called and offered to sell the subject domain name to the Complainant for 5,000 United States dollars. The Complainant declined the offer for three primary reasons: one, the offer was too much; two, the Complainant’s financial position at the time prevented the acquisition; three, the Complainant had invested heavily including the domain name <mcenterprisesusa.com> on letterhead, business cards, invoices, tradeshow exhibit, product packaging, magazine advertising, etc.

A search of the top five search engines (Google, Yahoo, Lycos, AOL, MSN) for MC Enterprises, produces <mcenterprisesusa.com> first in all cases.

On October 19, 2005, it came to the Complainant’s attention that the registration of the subject domain name apparently had lapsed.

The Complainant filed a backorder with and paid a non-refundable 50 United States dollars fee to GoDaddy.com to secure the subject domain name as soon as it became available.

Within a few days the status changed again and on November 10, 2005, Whois indicated a registrant change to Mark Segal (Namegiant.com). Although the Complainant had a backorder in effect as of October 26, 2005, it was either too late, the backorder system failed to function as the Complainant understood it would or the Respondent somehow circumvented the system. An inquiry to the Respondent on November 14, 2005, resulted in an offer to sell the subject domain name to the Complainant for 3,820 United States dollars plus fees. An email exchange in an effort to resolve the issue was not successful.

An AOL search of the website to which the subject domain name resolves produces a Network Solutions page stating “This Site is Under Construction and Coming Soon” and features Sponsored Links and a Related Topics Search all of which are motorcycle accessory related.

During the date and time of the Complainant’s search, the first listing under Sponsored Links was for jcwhitney.com. J.C. Whitney is the Complainant’s third largest distributor. A click on the link took the Complainant directly to the J.C. Whitney website. MC Enterprises was entered into the search box and that produced forty eight (48) of the Complainant’s products available for sale. Additionally, more than six other links to companies that offer the Complainant’s products for sale were found at this location.

The Respondent has made no legitimate non-commercial or fair use of the subject domain name or made a bona fide offering of goods or services. He has never been known by the subject domain name. The Respondent has no relationship with or permission from the Complainant for the use of its name and common-law trademark.

The Respondent’s website states, “…if we do not have the domain name of your choice, then we do have the contacts and software to find it”. He further claims to be one of the largest domain name brokers in the world.

The Respondent has a history of acquiring, registering and using domain names in bad faith. See WIPO Case Nos. D2004-0642 and D2005-0220.

The Respondent provided inaccurate and incomplete contact information on his Network Solutions Whois record. The phone number provided is a cell phone number and is lacking the 011 prefix required to complete the call. No fax number was provided. A different phone number and a fax number were found at Freewho.com.

Respondent

The Respondent did not participate in this proceeding.

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on its long use of “MC Enterprises” to establish a common-law trademark right and asserts that the subject domain name, “…is identical to and confusingly similar with the Complainant’s common law trademark”.

The Complainant also says, “…the presence of…information [concerning motorcycle parts] creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the location.

It is contended that the Respondent has made no bona fide use of the subject domain name. The website to which the subject domain resolves has been dormant. The Respondent is not known by the subject domain name and is not authorized to use the Complainant’s name.

The Complainant asserts that its name is well-known and must have been recognized by the Respondent at the time he acquired the subject domain name.

This fact and the attempt by the Respondent to sell the subject domain name to the Complainant are said to show bad faith as is the business of the Respondent as a broker of domain names and his history of prior cybersquatting.

The Respondent’s name alone (Namegiant.com) indicates his interest in selling domain names for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;

(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on previous domain name dispute decision. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

The Complainant’s long use of the name MC Enterprises (over 30 years) and the recognition of the names association with motorcycle products, as evidenced inter alia by the original disclaimer and other references to motorcycle products, establish a common-law right to “ MC Enterprises”.

The Complainant asserts, that the subject domain name “…is identical to and confusingly similar with the Complainant’s common law trademark”.

The two concepts differ, but it is clear in this case that the subject domain name is identical to the Complainant’s mark. It differs only by the case of the letters and the addition of “.com”, which is of no significance.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent clearly knows that the Complainant is in the motorcycle parts business. He does not operate the website to which the subject domain name resolves other than to make it desirable for acquisition by the Complainant.

The Respondent is not known by mcenterprises. He is not authorized by the Complainant to use the Complainant’s mark.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent is not the original registrant of the subject domain name, but for the purposes of the Policy, his acquisition of the subject domain name constitutes registration.

A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that lead to the finding often are relevant to the bad faith inquiry.

The Respondent appears to be a broker of domain names. It is a reasonable inference that he knew of the Complainant when he acquired the subject domain name. A search would have revealed the Complainant and its activities. The subject domain name is the name of the Complainant. That is, it is not simply a word or combination of words. The original disclaimer and subsequent references to motorcycle products all support and inference of such knowledge.

Pursuant to the Policy, the Respondent’s attempt to sell the subject domain, “…for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names”, raises an implication of evidence of bad faith.

Although a respondent is not obliged to participate in a domain name dispute, if it were to fail to do so, it would be vulnerable to the inferences that flow naturally from a complainant’s not unreasonable assertions of fact.

The information provided by the Complainant, including the Respondent’s history, suggest bad faith in the acquisition and use of the subject domain name. The Respondent has done nothing to supplant that suggestion.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

Based on the information provided to it and on its findings of facts, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.


Edward C. Chiasson, Q.C.
Sole Panelist

Dated: January 27, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1270.html

 

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