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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E.J. McKernan Co. v. Texas International Property Associates

Case No. D2007-1499

1. The Parties

Complainant is E.J. McKernan Co., Reno, Nevada, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.

Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by The Law Offices of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mckernanpackaging.com> (the “Disputed Domain Name”) is registered with Compana LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 12, 2007, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Name. A number of communications ensued among the Center, the parties, and the Registrar concerning the Disputed Domain Name. On October 22, 2007, the Center informed Complainant that, according to the Registrar, the registrant of the Disputed Domain Name was “slightly different than that listed in the Complaint (i.e., it should read “Associates” and not “Association”). Accordingly, the Center requested that Complainant file a short amendment to the Complaint and, on October 22, 2007, Complainant filed the amendment.

On October 26, 2007, 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) and, in accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint; accordingly, the proceedings commenced on October 26, 2007. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for November 15, 2007.

On November 15, 2007, Respondent submitted its Response. On November 16, 2007, Complainant requested permission to file a reply to Respondent’s Response. There is no express permission in the Rules for supplemental filings by either party except in response to a deficiency notification or if requested by the Center or the Panel. The Panel has considered Complainant’s request to file a supplemental filing in reaching its decision (discussed below).

On November 30, 2007, the Center appointed Steven M. Auvil as the sole panelist in this matter.

The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant, an industry leader in the discount packaging business since its inception in 1959, is the owner of U.S. Federal Registration No. 3,219,962 (March 20, 2007) for the mark MCKERNAN for “brokerage in the field of packaging and packaging components” in International Class 36 (the “McKernan Registration”). The McKernan Registration claims a first use date of September 1, 1969 and a first use in commerce date of September 1, 1994. Complainant applied for the McKernan Registration on May 4, 2006. On June 19, 1996, Complainant registered the <mckernan.com > domain name.

The Disputed Domain Name was first registered by Respondent with the Registrar on October 18, 2005. Complainant provided evidence that the Disputed Domain Name links to an advertising portal with packaging-related links. This is still the case as of the date of this decision.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends that the Disputed Domain Name is confusingly similar to its federally-registered MCKERNAN mark and a related MCKERNAN PACKAGING CLEARING HOUSE mark. Complainant contends that its federally-registered MCKERNAN mark was used prior to Respondent’s registration and use of the Disputed Domain Name.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent was not authorized by Complainant to use the MCKERNAN mark or any related marks.

Finally, Complainant contends that Respondent is a well-known cybersquatter. Complainant provided evidence that Respondent has been involved in numerous other UDRP proceedings where other panels found bad faith and ordered the transfer of approximately 33 domain names to the trademark owners. In this case, Complainant contends that Respondent registered and is using the Disputed Domain in bad faith hoping to attract visitors to a domain name parking web page and that this does not constitute a bona fide commercial use.

Complainant is seeking transfer of the Disputed Domain Name to Complainant.

B. Respondent

In its Response, Respondent attacks the validity of the McKernan Registration because the October 18, 2005 registration date of the Disputed Domain Name preceded the McKernan Registration’s application date (May 4, 2006). Respondent also attacks the validity of the McKernan Registration because the Examining Attorney concluded that “McKernan” was primarily merely a surname (the MCKERNAN mark was registered on the Principal Register under Section 2(f) of the Lanham Act).

Respondent contends that the links that appear on the Disputed Domain Name’s web page are triggered by the terms advertisers bid at Google and that Respondent does not purposefully target links from companies related to Complainant’s business. Respondent acknowledges that Respondent earns revenue on a pay-per-click basis through the Disputed Domain Name’s web site. However, Respondent contends that providing this web site is a bona fide service and the fact that Respondent earns pay-per-click revenue from the Disputed Domain Name’s web site is contrary to a finding of bad faith.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This Panel finds that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s federally-registered MCKERNAN mark.

First, the summary and abbreviated nature of this administrative proceeding precludes the establishment of the kind of fully-developed factual record that must underlie a determination of trademark validity. See, e.g., Classic Media, Inc. v. Warren R. Royal, WIPO Case No. D2006-0208 (June 19, 2006); Lockheed Martin Corp. v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824 (January 18, 2005); and Lake at Las Vegas Joint Venture v. Principal Equiti, Inc., WIPO Case No. D2002-0758 (October 4, 2002). Second, at a minimum, the MCKERNAN mark is entitled to a presumption of validity by virtue of its registration. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000). The Panel concludes that there is nothing in the record to overcome this presumption.

Moreover, for the sake of argument discounting Complainant’s federal registration, it is well-settled that that the Policy is applicable to unregistered marks. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (finding that the Policy is applicable to unregistered trademarks, and quoting from Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796 (“The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed name to be identical or confusingly similar to.”) The Panel finds that Complainant has longstanding rights in the MCKERNAN mark, with a first use date of September 1, 1969 and a first use in commerce date of September 1, 1994, which Respondent does not dispute.

The Panel also finds that the Disputed Domain Name is substantially identical or confusingly similar to Complainant’s MCKERNAN word mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, the addition of the generic term “packaging” and the “www” prefix does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s MCKERNAN mark. See, e.g., Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in “www.okidataprinter.com” was confusingly similar to complainant’s trademark OKIDATA); Aventis v. Woofer Smith, WIPO Case No. D2003-0338 (“The Respondent has only added ‘www’ before the trademark. The inclusion in the domain name of the prefix ‘www’ does nothing to distinguish it from the trademark.”)

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the MCKERNAN mark, a service mark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. On the other hand, Respondent argues that Respondent has a legitimate interest in the Disputed Domain Name because Respondent operates a “parking page” containing hyperlinks to other web sites and Respondent earns pay-per-click revenues from these links. Respondent is mistaken.

Previous panels have found that the use of a domain name that incorporates a third party’s trademark in connection with an Internet web site that merely lists hyperlinks to third party web sites, including those offering goods and services that are in direct competition with a complainant’s products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name. See, e.g., My Diamond Place, Ltd. v. Domains Ventures, WIPO Case No. D2005-1276 (“Complainant has also provided evidence that the Respondent has directed the disputed domain name to a web site offering, among other things, advertising and sponsored links for products and retailers that are in direct competition with the Complainant’s products. The Panel is of the opinion in this case that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.”); Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that a respondent’s diversionary use of complainant’s mark to attract Internet users to its own web site, which contained a series of hyperlinks to unrelated web sites, was neither a bona fide offering of goods and/or services nor a legitimate noncommercial or fair use of the disputed domain names). Therefore, the Panel concludes that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.

Moreover, Respondent has not asserted, and nothing in the record suggests, that Respondent is commonly known by the Disputed Domain Name. Further, Respondent has not asserted, and nothing in the record suggests, that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the MCKERNAN mark.

In short, Respondent registered the Disputed Domain Name several years after Complainant established rights in its MCKERNAN mark through extensive use. The fact that Respondent included the word “packaging” in the Disputed Domain Name evidences that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name. In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Name. Compare Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCRco.”, WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant).

For these reasons, in accordance with Paragraph 4(a)(ii) of the Policy, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that: (1) Respondent registered a domain name incorporating Complainant’s mark despite having no connection to Complainant; (2) there is no question, given Complainant’s extensive use of the MCKERNAN marks in the United States and the nature of the Disputed Domain Name (including the word “packaging”), that Respondent had actual knowledge of Complainant’s prior rights in the MCKERNAN mark and Complainant’s packaging business when Respondent registered the Disputed Domain Name; (3) to date, the only “use” of the Disputed Domain Name has been to divert unsuspecting viewers seeking information regarding Complainant and its services to an unrelated web site containing links to goods/services that are not authorized by Complainant; and (4) Respondent is a well-known cybersquatter and has been involved in numerous UDRP proceedings resulting in the transfer of approximately 33 domain names.

The Panel agrees with Complainant. The evidence in this case does demonstrate that Respondent has registered and is using Complainant’s MCKERNAN mark in the Disputed Domain Name in bad faith. As already discussed, the Panel finds that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name because Respondent combined the MCKERNAN mark with the word “packaging” in the Disputed Domain Name. This Panel can think of no plausible reason why Respondent would register and use a domain name that contains Complainant’s mark (MCKERNAN) and its principal business (packaging) that would be legitimate. See, e.g., eBay, Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Co. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”).

Further, Respondent has been using the Disputed Domain Name in order to attract traffic to a web site for commercial gain, which previous WIPO panels have concluded may also support a finding of bad faith. Compare Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”)

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

Because the Panel concludes that Complainant has established each requisite element to obtain relief under paragraph 4(a) of the Policy, Complainant’s request to submit a supplemental filing is moot.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <mckernanpackaging.com> be transferred to Complainant.

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Steven Auvil
Sole Panelist

Date: December 17, 2007