McMaster-Carr Supply Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2005001898296
Complainant is McMaster-Carr Supply Company (“Complainant”), represented by Christine Feller of Schiff Hardin LLP, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcastercarr.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2020; the Forum received payment on May 29, 2020.
On June 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2020 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@mcastercarr.com. Also on June 3, 2020, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, McMaster-Carr Supply Company, sells and distributes industrial supply products. Complainant has rights in the MCMASTER-CARR mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,251,022, registered June 8, 1999). Respondent’s <mcastercarr.com> domain name is nearly identical to Complainant’s MCMASTER-CARR mark because it simply deletes the second “m” from the mark and removes the hyphen.
Respondent does not have rights or legitimate interests in the <mcastercarr.com> domain name. Respondent is not commonly known by the disputed domain name and has not been granted permission to use the MCMASTER-CARR mark. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects Internet users to a network of unaffiliated websites.
Respondent registered and uses the <mcastercarr.com> domain name in bad faith. Respondent diverts Internet users seeking Complainant to various webpages for commercial gain. Additionally, users are put as risk of downloading potential malware by accessing the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <mcastercarr.com> domain name.
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 rights in the MCMASTER-CARR mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under 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).”). Complainant provides evidence of registration of the MCMASTER-CARR mark with the USPTO (e.g., Reg. No. 2,251,022, registered June 8, 1999). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mcastercarr.com> domain name is nearly identical to Complainant’s MCMASTER-CARR mark because it simply deletes the second “m” from the mark and removes the hyphen. The disputed domain name also adds the ”.com” generic top-level domain (“gTLD”) to the mark. Misspelling a mark by adding, deleting, or transposing letters is insufficient to overcome confusing similarity under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Additionally, the removal of hyphens and the addition of a gTLD are irrelevant in determining confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that the disputed domain name is confusingly similar to Complainant’s MCMASTER-CARR mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <mcastercarr.com> domain name because Respondent is not commonly known by the disputed domain name and has not been granted permission to use the MCMASTER-CARR mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio Electronico” and no information indicates that Complainant authorized Respondent to use the mark. This is evidence that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <mcastercarr.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain name to redirect Internet users to a network of unaffiliated websites. Use of a disputed domain name to redirect Internet users to various unrelated webpages is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum, Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant argues that Respondent is likely confusing users into believing that the unaffiliated websites reached through the disputed domain are endorsed by Complainant. Complainant provides screenshots of two webpages that can be reached from the disputed domain. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <mcastercarr.com> domain name in bad faith because Respondent diverts Internet users seeking Complainant to various webpages for commercial gain. Use of a disputed domain name to redirect Internet users to other webpages may evidence bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”). Complainant claims that Respondent profits off Complainant’s reputation through the receipt of referral fees or click-through payments when users are redirected to other webpages from the disputed domain. Complainant provides screenshots of two websites to which users are diverted. This is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant also claims that users are put at risk of downloading potential malware by accessing the <mcastercarr.com> domain. Installation of malicious software on users’ computers is evidence of bad faith under Policy ¶4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant notes that some sites accessed through the disputed domain are blocked by malware protection programs and many of the sites prompt users to download applications. The Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mcastercarr.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
July 3, 2020
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