SCK Direct Inc. D/B/A Kitchen Brains v. Mazen Aloul
Claim Number: FA1906001848049
Complainant is SCK Direct Inc. D/B/A Kitchen Brains (“Complainant”), represented by Alexander D. Brown of The Concept Law Group, P.A., Florida, USA. Respondent is Mazen Aloul (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modularm.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2019; the Forum received payment on June 14, 2019.
On June 17, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <modularm.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@modularm.com. Also on June 20, 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 July 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On July 23, 2019, pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy the Panel issued ‘Order for additional submissions and extending time for rendering a decision’ to Complainant setting a deadline of July 29, 2019 by which Complainant could file Additional Submissions in response to the Procedural Order. On July 29, 2019, Complainant submitted Additional Submissions.
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
i) Complainant is in the business of monitoring and controlling equipment for commercial refrigeration. Complainant has rights in the MODULARM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,457,729, registered Dec. 31, 2013). See Compl. Appendix A. Complainant’s rights date back to at least June 30, 1981 when Complainant’s predecessors first began using the mark in commerce. Id. The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s entire mark.
ii) Respondent has no rights or legitimate interests in the <modularm.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fraudulently poses as Complainant and advertises goods manufactured by Complainant bearing Complainant’s mark. Additionally, Complainant’s predecessor originally registered the domain name in 1998 and maintained the domain name until Complainant purchased the company, merged the MODULARM brand with its own, and eventually lost control of the domain name between November 2017 and August 2018. See Compl. Appendixes E and F.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to pass itself off as Complainant through its use of the disputed domain name. See Compl. Appendixes E and F. Additionally, given the content displayed on the resolving webpage, Respondent had actual knowledge of Complainant’s rights in the MODULARM mark when it registered the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
C. Additional Submissions
Complainant
In response to the Panel’s order for additional submissions and extending time for rendering a decision requesting Complainant to provide objective evidence proving Modularm, Inc., Complainant’s predecessor registered the disputed domain name on March 18, 1998; and it used, managed, and maintained the disputed domain name from 1998 until December 2012, Complainant submitted Additional Submissions as summarized below:
i) Although the DomainTools’ report’s history only goes back as far as April 6, 2001, said record shows that Modularm Corp. was the Registrant of <modularm.com> as of that date, and further shows that the registration was created on March 18, 1998. The next available record is shown as of December 1, 2006, and continues to show Modularm, Inc. as the Registrant; this particular record also shows a screenshot of the website taken on November 14, 2006. The subsequent captures continue to show Modularm, Inc. as the Registrant in 2010 through January 2013, and contain representative screenshots of the site as it existed throughout that time frame. See Compl. Additional Sub. Exhibit 1. Complainant purchased Modularm, Inc. on December 31, 2012, and all of its goodwill and assets. See Compl. Additional Sub. Exhibit 2 (the complete Asset Purchase Agreement). As a result of said purchase, the screen captures in the attached Exhibit 1 that follow January 2013 show <modularm.com> being redirected to the Complainant’s other website, https://www.kitchenbrains.com/. See Compl. Additional Sub. Exhibit 1.
ii) A review of the WaybackMachine Internet Archive repository shows Modularm Corp displayed from August 2002 through May 2013. Importantly, on the screenshots of the WaybackMachine’s archival records for February 2013 and May 2013, the page contains the following announcement: ‘January 17th, 2013 – Kitchen Brains Announces Acquisition of Modularm Corporation’ Further, the archived pages for April 2013 and May 2015 contain a more prominent announcement of Complainant’s acquisition of Modularm, Inc. In addition, the archived record for June 2017 illustrates that <modularm.com> was “redirecting to…https://www.kitchenbrains.com/. See Compl. Additional Sub. Exhibit 3. Taken together with the DomainTools’ report discussed above, Complainant believes that this information should satisfy the Arbitrator’s inquiries.
1. Complainant has established rights in the MODULARM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,457,729, registered Dec. 31, 2013).
2. The disputed domain name was created on March 18, 1998.
3. The WaybackMachine Internet Archive repository shows that Complainant’s predecessor displayed from August 2002 through May 2013.
4. The archived record for June 2017 illustrates that the disputed domain name was “redirecting to …https://www.kitchenbrains.com/.
5. A screenshot of the resolving webpage of the disputed domain name from August 7, 2018 displays the MODULARM mark and name along with information and products relating to Complainant’s business.
6. Screenshots of the “News and Updates” portion of Respondent’s website shows products and information relating to Complainant’s business.
7. Complainant’s predecessor maintained the disputed domain name until Complainant purchased the company in 2012, merged the MODULARM brand with its own.
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 claims rights in the MODULARM mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,457,729, registered Dec. 31, 2013). See Compl. Appendix A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MODULARM mark for the purposes of Policy ¶ 4(a)(i).
Complainant also claims that its rights in the MODULARM mark date back to at least June 30, 1981 when Complainant’s predecessors first began using the mark in commerce. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant does not provide any evidence of the use of the mark in commerce. However, Complainant does provide evidence of its purchase of the MODULARM brand in 2012. However, the Panel finds that evidence of Complainant's purchase of the MODULARM brand in 2012 is insufficient to establish its common law trademark rights for MODULARM dating back to 1981 for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s entire mark. The Panel notes that the disputed domain name adds the “.com” generic top-level domain (“gTLD”) to Complainant’s mark and finds that the mere addition of a gTLD to a complainant’s mark generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the disputed domain name is identical to Complainant's MODULARM mark 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), then the burden shifts to Respondent to show 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 contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Mazen Aloul” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fraudulently poses as Complainant and advertises goods manufactured by Complainant bearing Complainant’s mark. Using a confusingly similar domain name to pass off as a complainant and offer competing goods can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides a screenshot of the resolving webpage from August 7, 2018, which displays the MODULARM mark and name along with information and products relating to Complainant’s business. See Compl. Appendix E. Complainant also provides screenshots of the “News and Updates” portion of Respondent’s website which also shows products and information relating to Complainant’s business. See Compl. Appendix F. Lastly, Complainant provides screenshots of itself selling the items featured on the webpage associated with the disputed domain name. See Compl. Appendix I. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant, failing to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Additionally, Complainant argues that its predecessor originally registered the disputed domain name in 1998 and maintained the domain name until Complainant purchased the company in 2012, merged the MODULARM brand with its own, and eventually inadvertently lost control of the domain name between November 2017 and August 2018. A respondent who registers a domain name previously held by a complainant can be found to lack rights and legitimate interests in that domain name. See Biofert Manufacturing Inc. v. Muhammad Adnan / Biofert manufacturing, FA 1753132 (Forum Nov. 27, 2017) (“[T]he Panel agrees that Respondent’s subsequent registration fails to confer rights and legitimate interests in the <biofert.net> domain name for the purposes of Policy ¶ 4(a)(ii).”). Complainant provides the documentation relating to its purchase of the MODULARM brand, along with the website which the domain name allegedly redirected users from 2012 until 2018. See Compl. Appendix C. Accordingly, the Panel finds that Complainant used to own the disputed domain name, indicative of Respondent’s lack of rights and legitimate interests in the same per Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. 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.
The Panel notes that the creation date of the disputed domain name (March 18, 1998) predates Complainant’s first claimed rights in the MODULARM mark registered on December 31, 2013. Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use.
However, the predecessor of Complainant stated it owned the disputed domain name as of December 31, 2012. See Compl. Additional Sub. Exhibit 2 (the complete Asset Purchase Agreement, at Annex I-Q, section 6.20 (d)). Taken together with all the circumstances as illustrated in the Complainant’s additional submissions along with supporting exhibits, the Panel finds that Respondent’s registration of the disputed domain name postdates Complainant’s first claimed rights in the MODULARM mark registered on December 31, 2013.
Complainant claims that Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to pass itself off as Complainant through its use of the domain name. Using a confusingly similar domain name to pass off as a complainant and offer competing products for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). The Panel recalls that Complainant provides screenshots of the resolving webpage located at the disputed domain name, showing that the website displays the MODULARM mark and name along with information and products relating to Complainant’s business. See Compl. Appendix E. Complainant also provides screenshots of its own offering of related products. See Compl. Appendix I. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MODULARM mark at the time of registering the disputed domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the content displayed on the resolving webpage. The Panel agrees with Complainant and infers that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <modularm.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 31, 2019
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