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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS

Case No. D2008-0009

 

1. The Parties

The Complainant is MAACO Enterprises, Inc., King of Prussia, Pennsylvania, of United States of America, represented by DLA Piper US LLP, United States of America.

The Respondent is IP Admin / DNAV ASSOCS, Tillamook, Oregon, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <wwwmaaco.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2008. On January 4, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 4, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on January 9, 2008 and January 10, 2008. The Center verified that the Complaint together with the amendments to 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 January 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2008.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on February 19, 2008. 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 is a nationally-franchised chain of shops that provides automobile painting and repairs and related services. Complainant has registered several trademarks with the United States Patent and Trademark Office for MAACO and related names and phrases, with dates of first use going back to May, 1972.

Respondent registered the disputed domain name on June 22, 2005. The disputed domain name leads to a website that contains links to third parties’ websites. The DNS servers for the disputed domain name are <ns1.parkingpanel.com> and <ns2.parkingpanel.com>, and the website at the disputed domain name states that it is “Powered By ParkingPanel.com”. The Complaint alleges and Respondent has failed to contravene that Respondent receives click-through fees for diverting Internet users to third-party websites. The “ParkingPanel.com” website states, among other things, “Set your domains on autopilot and let us maximize your revenue”.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has been in the automobile painting and repair (and related service) business since at least as early as 1972, that it has at least 10 trademarks for MAACO and related names and phrases incorporating the word MAACO, that Complainant has expanded since 1972 to approximately 450 locations in the U.S. and approximately 40 locations in Canada, that Complainant and its franchisees have generated $57 - $65 million in revenue in recent years, and that Complainant spends approximately $20 - $23 million each year on advertising. Complainant asserts that the disputed domain name is confusingly similar to Complainant’s MAACO mark, as it consists of Complainant’s exact mark with the addition of a top level domain at the end and a “www”, without a period, at the beginning - thereby allegedly constituting “typo-piracy” or typosquatting. Complainant asserts that using a domain name as a portal to competitors’ websites is not a bona fide offering of goods or services, that Respondent is not commonly known by the name MAACO, and that Respondent receives click-through fees for diverting Internet users to third-party websites, thereby constituting bad faith use with no legitimate interest in the disputed domain name.

B. Respondent

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

 

6. Discussion and Findings

Pursuant to Rule 15, panelists in domain name disputes “shall 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 [they] deem[] applicable”.

Under Rule 4(a), the Complainant must prove the following:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under Rule 4(a)(i) the Complainant must show that the domain name at issue is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

The registration certificates attached to the Complaint demonstrate that Complainant has rights in the mark MAACO. As the Panel noted in CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0373, “[m]any prior Panel decisions have considered domain names that consist of the prefix ‘www’ affixed to a trademark and have concluded that such domain names are substantially similar to the relevant trademark”. Further, as this Panel found in 1st Auto Transport Directory, Inc. v. i Planet Consulting, Inc., WIPO Case No. D2006-1212, “‘[t]yposquatted’ domain names, if they have their desired effect, are by definition confusingly similar to trademarks”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

The Complainant also must demonstrate that the Respondent has “no rights or legitimate interests in respect of the domain name”. Rule 4(a)(ii). “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4.c.

Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the name “Maaco”. The Panel accepts this unrebutted assertion.

The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests. United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987. As one Panel recently noted in a similar case involving this same Respondent, “[u]sing another’s well-known trademark to mislead users into accessing one’s website, which in turn provides diverting click-through opportunities to a search engine composed of sponsored links is not a bona fide offering of goods/services”. Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812.

Particularly in this case, where Respondent has offered no reason (and there appears to be no obvious reason) why Respondent’s commercial use should be considered bona fide or a fair use, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

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

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The disputed domain name wholly incorporates the Complainant’s MAACO mark in combination with the prefix “www”. The registration of such a domain name by the Respondent strongly suggests an intent to create confusion with Complainant’s mark. Respondent’s website refers to the same kinds of services that Complainant offers, but links to third parties’ sites with revenue presumably being generated when users click through the links. This satisfies at least section 4(b)(iv) of the Policy. See United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (October 5, 2007); Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231 (May 10, 2005); Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221 (May 9, 2005). The Panel in Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812 (February 15, 2008) found that this exact practice, when engaged in by this same Respondent, with respect to another trademark, constituted bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

 

7. Decision

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


Bradley A. Slutsky
Sole Panelist

Dated: March 4, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0009.html

 

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