Vishay MCB Industrie S.A.S. v. Zox Marketing
Claim Number: FA1905001845106
Complainant is Vishay MCB Industrie S.A.S. (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., United States of America. Respondent is Zox Marketing (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcbindustrie.com> registered with DropCatch.com 681 LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 29, 2019, DropCatch.com 681 LLC confirmed by e-mail to the Forum that the <mcbindustrie.com> domain name is registered with DropCatch.com 681 LLC and that Respondent is the current registrant of the name. DropCatch.com 681 LLC has verified that Respondent is bound by the DropCatch.com 681 LLC 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 May 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2019 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 postmaster@mcbindustrie.com. Also on May 31, 2019, 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 June 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant, Vishay MCB Industrie S.A.S., provides customized electromechanical components for industry-specific applications. Although Complainant owns no registrations of the trademarks MCB and MCB INDUSTRIE, it has common law rights therein through extensive and exclusive use since 1929. From 2004 through 2017 Complainant was the owner of the disputed domain name and hosted information about its company on the resolving website. However, that domain name registration lapsed in 2017 unbeknownst to Complainant. Respondent’s <mcbindustrie.com> domain name, registered on September 22, 2017, is identical to Complainant’s mark because it incorporates the MCB INDUSTRIE mark in its entirety. Furthermore, Complainant’s prior use of the disputed domain name, which wholly incorporates its MCB INDUSTRIE mark, is further evidence of confusing similarity.
Respondent lacks rights and legitimate interests in the <mcbindustrie.com>
name because Respondent is not commonly known by the disputed domain name
and is not licensed or otherwise authorized by Complainant to use Complainant’s
mark in any fashion. Additionally, Respondent fails to use the disputed domain
name in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use. Rather, the disputed domain name attempts
to divert Internet users to Respondent’s website where Respondent hosts several
links to third-party websites, including sites that host adult-oriented
material. Further, Complainant owned the disputed domain name beginning in 2004
and Respondent opportunistically registered it after it lapsed in 2017.
Respondent also registered and uses the <mcbindustrie.com> domain name in bad faith because Respondent intentionally intended to disrupt Complainant’s business by leveraging the MCB and MCB INDUSTRIE marks to gain traffic for Respondent’s website. Further, Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, endorsement, or affiliation of Respondent’s website. Specifically, Respondent uses the disputed domain name to host third-party links to generate click-through revenue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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”).
Complainant asserts common law rights and secondary meaning in the MCB and MCB INDUSTRIE marks based upon its extensive and exclusive use thereof. Common law rights can be established through length and manner of use, advertising and other factors. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) Complainant claims that its MCB and MCB INDUSTRIE marks have been in use since 1929, they have been extensively advertised and have been the subject of significant press within Complainant’s field of business, and that links relating to the marks appear as the exclusive results when conducting an Internet search for the term “MCB industrie”. Supporting evidence has been submitted for this claim. Accordingly, the Panel finds that Complainant has established common law rights in the MCB and MCB INDUSTRIE marks for the purposes of Policy ¶ 4(a)(i).
Further, Complainant argues that Respondent’s <mcbindustrie.com> domain name is identical or confusingly similar to Complainant’s marks because Respondent incorporates the MCB INDUSTRIE mark in its entirety and merely adds the word “industrie” to the MCB mark.
Finally, the disputed domain name adds the “.com” generic top-level domain (“gTLD”) to the marks. While Complainant does not specifically make this argument, it is well accepted that the addition of a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”)
Therefore, the Panel finds that the <mcbindustrie.com> domain name is identical or confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <mcbindustrie.com> domain name because Respondent is not authorized to use Complainant’s marks and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes that the WHOIS record for the disputed domain identifies the Respondent as “Zox Marketing” and no information in the record shows that Respondent is known otherwise or that it was authorized to use Complainant’s mark. Accordingly, the Panel concludes that Respondent is not commonly known by the <mcbindustrie.com> domain name and thus lacks rights and legitimate interests in the domain under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <mcbindustrie.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to divert Internet users seeking Complainant’s business to the website of the disputed domain name which hosts links to third-party sites. Using a disputed domain name to host third-party links may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant provides a screenshot of the disputed domain name’s resolving home page, which mentions adult-oriented themes relating to “cougars”, “breasts”, and “MILFs”. However, the screenshot submitted by Complainant does not itself indicate whether any elements of the page are actually links to further pages and no screenshots of any other pages, from the <mcbindustrie.com> site or any third-party sites have been submitted. Therefore, the Panel has insufficient evidence upon which to conclude that Respondent’s website “provides links to various third party websites that offer various NSFW [not suitable for work] content” as claimed by the Complainant.
However, the Panel notes that the top of Respondent’s website contains the text “MCB Industrie | Milf, Cougars, Boobs Industrie”. In the absence of a Response or any other submission by the Respondent, this leads the Panel to conclude that it is more likely than not Respondent employs this phrase as a pretextual justification for its use of the disputed domain name. See National Hockey League v. Daniel Krusz, Case No. D2001-0234 (WIPO Apr. 6, 2001) (Respondent's posting of snapshots purporting to be “New Hampshire Lakes” at its <nhlcoolshots.com> website held to be pretextual); National Organization for the Reform of Marijuana Laws v. Industry Internet, LLC and Anthony Disano, Case No. D2002-0938 (WIPO Dec. 17, 2002) (Respondents' use of the phrase “Northern Michigan Laboratories” on its website at <norml.com> is “a pretext concocted only after registering the Contested Domain Name and a cease and desist letter from Complainant. Respondents are using the site ‘for commercial gain’ and ‘to misleadingly divert consumers.’”) In light of this finding, the Panel holds that Respondent makes no bona fide offerings in connection with, or a legitimate noncommercial or fair use of the <mcbindustrie.com> domain name under Policy ¶¶ 4(c)(i) or (iii). Rather, it is simply leveraging the traffic that is drawn to the website based upon the value of Complainant’s marks.
Finally, Complainant argues that Respondent lacks rights and legitimate
interests in the <mcbindustrie.com> domain
name because Complainant previously owned the disputed domain name. Registering
a disputed domain name that was previously owned by a complainant based upon
its trademark value may show a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See
Raise Labs, Inc.
v. Hong young jin,
FA 1685247 (Forum Sept. 1, 2016)
(“[The disputed domain name was]
registered by Complainant on or about September 20, 2013. The registration was
inadvertently allowed to lapse and was registered by Respondent at a subsequent
date… As Respondent has not filed a Response or attempted by any other means to
rebut the prima facie case against it, the Panel finds that Respondent
has no rights or legitimate interests in the disputed domain name.”) Here,
Complainant argues that the disputed domain name was registered by Complainant
in 2004 and that it was inadvertently allowed to lapse in 2017 “unbeknownst to
Complainant”. Complainant provides archival screenshots of the disputed domain
name’s website when it was registered to Complainant showing that the site
contained information about Complainant and its business. Therefore, the Panel
finds that this further supports the prima facie case that Respondent
lacks rights and legitimate interests under Policy ¶
4(a)(ii).
Complainant argues that Respondent registered and uses the <mcbindustrie.com> domain name in bad faith because Respondent intends to disrupt complainant’s business. Using a disputed domain name to disrupt a complainant’s business may be evidence of bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Here, Complainant argues that Respondent attempts to trade upon the goodwill associated with Complainant’s marks to gain traffic for its website and disrupt Complainant’s business. In this sense, Respondent is a competitor of the Complainant’s for internet traffic. The Panel thus agrees with Complainant and finds bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent attempts
to attract, for commercial gain, internet users to its <mcbindustrie.com>
site by creating a likelihood of confusion as to the source, sponsorship,
endorsement, or affiliation of the website by using the disputed domain name to
host third-party links in order to generate click through revenue. Using a
disputed domain name to host third-party links for commercial gain may be
evidence of bad faith under Policy ¶
4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe,
FA1506001625786 (Forum Aug. 2,
2015) (holding that the respondent had acted in bad faith under Policy ¶
4(b)(iv), where it used the disputed domain name to host a variety of
hyperlinks, unrelated to the complainant’s business, through which the
respondent presumably commercially gained). As noted above, Complainant only provides
a screenshot of the disputed domain name’s resolving home page which mentions adult-oriented
material but does not itself evidence any links to third-party sites.
However, the Panel finds it more likely than not that Respondent registered and used the disputed domain name opportunistically to obtain the user traffic that was intended for Complainant and that was driven by its MCB and MCB INDUSTRIE marks. The Complainant in Carl Cartee v. Stanley Bell, FA 1724616 (Forum May 8, 2017) claimed that it was the previous registrant of the domain name in dispute and that it inadvertently allowed the registration to lapse. The Respondent then opportunistically registered the domain. In finding bad faith registration and use, the Panel noted that “the [Respondent’s] objective of re-registration is to pass off the site as a legitimate site belonging to Complainant in order to increase the search ranking of the other sites linked by the articles posted to the site.” Id. Therefore, in the absence of any Response or other submission by the Respondent, the Panel also finds bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcbindustrie.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 26, 2019
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