Mac Acquisition IP LLC v. Tech Domain Services Private Limited
Claim Number: FA1001001304373
Complainant is Mac Acquisition IP LLC (“Complainant”), represented by Renee
S. Kraft, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <macaronigirll.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2010.
On January 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <macaronigirll.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 28, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 17, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@macaronigirll.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant owns the international restaurant brand
“Romano’s Macaroni Grill,” which has 207 locations in the
Complainant owns numerous marks registered with the United States Patent and Trademark Office (“USPTO”) for its MACARONI GRILL service mark (including Reg. No. 2,997,750, issued Sept. 20, 2005).
Respondent registered the <macaronigirll.com> domain name on October 9,
2005.
Respondent’s domain name resolves to a website displaying third-party links to websites offering restaurant and food services in competition with the business of Complainant.
Respondent’s <macaronigirll.com> domain name is confusingly similar to Complainant’s MACARONI GRILL mark.
Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark.
Respondent’s domain name is not being used in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name.
Respondent does not have any rights to or legitimate interests in the domain name <macaronigirll.com>.
Respondent is taking advantage of Internet users who are trying to reach Complainant’s website by using a common misspelling of Complainant’s MACARONI GRILL mark in the formation of the disputed domain name.
Respondent registered and uses the <macaronigirll.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MACARONI GRILL service mark for purposes of Policy ¶ 4(a)(i) through its mark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.” The mark registrations need not be in the country where Respondent resides for the purposes of satisfying Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of Policy ¶4(a)(i) whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Complainant argues that the disputed domain name <macaronigirll.com> is confusingly similar to its MACARONI GRILL mark.. We agree. Transposing letters of a mark and misspelling the mark does not distinguish the disputed domain name from the mark for purposes of Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that:
[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very probable
typographical error.
To the same effect, see also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002).
Similarly, deleting the space between the elements of a mark
and adding a gTLD in forming a domain name does not make the domain name
distinctive for purposes of Policy ¶ 4(a)(i). See
Therefore, the Panel finds
that the disputed domain name is confusingly similar to the MACARONI GRILL mark
under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <macaronigirll.com> domain name. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
[c]omplainant
must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.
To the same effect, see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).
Complainant has produced a prima facie case. Therefore,
and owing to Respondent’s failure to respond to these proceedings, we may safely
presume that Respondent does not have any rights to or legitimate interests in
the disputed domain name. See Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to the allegations of a complaint).
We will nonetheless examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complaint argues, and Respondent does not deny, that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. Moreover, the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. We are therefore constrained to conclude that Respondent is not commonly known by the disputed domain name, and, therefore, Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights and legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also observe that Complainant asserts, and Respondent does not deny, that Respondent’s disputed domain name is not being used in connection with a bona fide offering of goods or services, that Respondent is not making a legitimate noncommercial or fair use of the domain name, and that the subject domain name resolves to a website displaying click-through links to websites offering restaurant and food services in competition with the business of Complainant. Respondent’s use of the disputed name as alleged, presumably for financial gain, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to various competing commercial websites, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Finally under this head of the Complaint, Complainant argues
that Respondent is taking advantage of Internet users that are trying to reach
Complainant’s website by using a common misspelling of the Complainant’s
MACARONI GRILL mark in forming the disputed domain name. Respondent does not contest this assertion. Respondent’s
behavior constitutes typo-squatting, which is evidence that Respondent lacks rights
to or legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.
Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name to attract
internet users to its website, presumably for its commercial gain, disrupts
Complainant’s business and is therefore evidence of bad faith registration and
use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a contested domain name to attract
Internet users to a directory website containing links to the websites of a
complainant’s commercial competitors represents bad faith registration and use of
the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v.
Further, Respondent’s use of the disputed domain name to attract Internet users to its resolving website for commercial gain is itself evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). Respondent’s use of the domain name creates a likelihood of confusion between the domain name and Complainant’s MACARONI GRILL mark, and Respondent evidently seeks to capitalize on that likelihood of confusion while receiving click-through fees paid by websites in competition with the business of Complainant which are displayed on Respondent’s website. This use of the contested domain is evidence of bad faith and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent gained commercially from the likelihood of confusion between a complainant’s AIM mark and the competing instant messaging products and services advertised on a website which resolved from the disputed domain name).
We have already determined that Respondent has engaged in
typo-squatting, which is itself evidence of bad faith registration and use of a
contested domain name under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v.
Geer,
FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typo-squatting in its purest
form); see also Microsoft
Corp. v. Domain Registration
Therefore, the Panel finds that Respondent has registered
and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <macaronigirll.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 10, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration ForuM