Minacs Corporation v. T Brown and Ann Gree-Rintor
Claim Number: FA1001001304642
Complainant is Minacs Corporation (“Complainant”), represented by Elizabeth
L. Peters,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <minacsclassaction.com> and <minacssucks2.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2010.
On January 26, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <minacsclassaction.com> and <minacssucks2.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 February 16, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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@minacsclassaction.com and postmaster@minacssucks2.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <minacsclassaction.com> and <minacssucks2.com> domain names are confusingly similar to Complainant’s MINACS mark.
2. Respondent does not have any rights or legitimate interests in the <minacsclassaction.com> and <minacssucks2.com> domain names.
3. Respondent registered and used the <minacsclassaction.com> and <minacssucks2.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Minacs Corporation, is a global provider of business outsourcing services, including technical support and call centers. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MINACS mark (e.g., Reg. No. 2,661,062 issued on December 17, 2002).
Respondent registered the <minacsclassaction.com> domain name on Novemeber 20, 2009 and the <minacssucks2.com> domain name on December 16, 2009. Respondent is a former employee of Complainant. The <minacsclassaction.com> domain name resolves to a website that offers information on class action lawsuits as well as solicitation to join or start a class action against Complainant. The <minacssucks2.com> domain name resolves to a website displaying discussions and speech against Complainant’s business.
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 the 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:
(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.
Complainant owns trademark registrations with the USPTO for
its MINACS mark (e.g., Reg. No.
2,661,062 issued on December 17, 2002).
Previous panels have decided that trademark registrations with the USPTO
are sufficient evidence of legal rights in a mark for purposes of Policy ¶
4(a)(i), and so this Panel finds. 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <minacsclassaction.com> and <minacssucks2.com> domain names are confusingly similar to its MINACS mark. Complainant notes that both disputed domain names encompass its entire mark while adding the generic terms “class action,” or “sucks,” as well as the addition of the number “2” and the generic top level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s MINACS mark for purposes of Policy ¶ 4(a)(i). See Cabela’s Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding that the complainant, owner of the Federally registered trademark ‘Cabela’s,’ and user of the domain name <cabelas.com> was entitled to relief under UDRP against the respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [<cabelassucks.com>] in addition to Complainant’s site <cabelas.com>.”); see also ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s MINACS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the Respondent’s <minacsclassaction.com> and <minacssucks2.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Upon Complainant producing a prima facie case the burden of proof shifts to Respondent to produce evidence it has rights or interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant 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.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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 where the respondent fails to respond).
Complainant alleges that the <minacsclassaction.com> domain name contains information that Internet users
could interpret as pertaining to on-going litigation with Complainant. Complainant argues that this type of use is
not a bona fide offering of goods or
services, nor is it a noncommercial or fair use. The Panel finds that Respondent’s use of the
disputed domain name is not connected to a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001) (holding that the respondent’s showing that it “has a right to free
speech and a legitimate interest in criticizing the activities of organizations
like the Complainant . . . is a very different thing from having a right
or legitimate interest in respect of [a domain name that is identical to
Complainant’s mark]”); see also E. & J. Gallo Winery v. Hanna Law Firm,
D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free
speech/complaint site does not give rights to use a famous mark in its
entirety).
Complainant further alleges that the <minacssucks2.com> domain name that
contains derogatory information about Complainant’s business is evidence that
Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that
Respondent’s use of the disputed domain name is not connected to a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Monty & Pat
Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does
not dispute Respondent’s right to establish and maintain a website critical of
Complainant . . . However, the panel does not consider that this gives
Respondent the right to identify itself as Complainant.”); see also supra E.
& J. Gallo Winery v. Hanna Law Firm.
Complainant further
argues that Respondent is not commonly known by the disputed domain names, nor
has Complainant given Respondent permission to use its mark. The WHOIS information identifies Ann
Gree-Rintor as the registrant, and there is no further evidence on record to
show that Respondent is known by the disputed domain names. The Panel finds that Respondent lacks rights
or legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See IndyMac Bank
F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of 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 the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
The Pane finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated paragraphs in Policy ¶ 4(b). See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant argues that Respondent’s use of the disputed
domain names is a disruption to Complainant’s business and is damaging to its
reputation. Complainant further states
that potential customers and Internet users are being misled about
Complainant’s company based upon the information on Respondent’s websites. The Panel finds that Respondent’s use and
intent is to disrupt and damage the business dealings of Complainant which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the
respondent's use of the complainant's mark to redirect Internet users to a
website dedicated to criticizing the complainant was evidence that the
respondent’s domain names were registered and used in bad faith); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(finding that the respondent registered the domain names
<kwasizabantu.com>, <kwasizabantu.org>, and
<kwasizabantu.net> in bad faith where the respondent published negative
comments regarding the complainant’s organization on the confusingly similar
website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minacsclassaction.com> and <minacssucks2.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 25, 2010
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