Tenneco Automotive Operating Company Inc. v. Naushad Dhukka / SoftDot Technologies, LLC
Claim Number: FA1104001384326
Complainant is Tenneco Automotive Operating Company Inc. (“Complainant”), represented by George T. Schooff, Michigan, USA. Respondent is Naushad Dhukka / SoftDot Technologies, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monroe.co> (“the disputed domain name”), registered with REGISTER.COM LP (“Register.Com”).
The undersigned, David H Tatham, Hon. Karl V Fink, and Hong Oo Baak certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 18, 2011; the Forum received payment on April 18, 2011.
On April 22, 2011, Register.com confirmed by e-mail to the Forum that the disputed domain name <monroe.co> is registered with it and that Respondent is the current registrant of the name. Register.com has verified that respondent is bound by its 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 April 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2011 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@monroe.co. Also on April 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A Response was received on May 19, 2011 but, being out of time, was deemed by the Forum to be deficient.
On May 23, 2011 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, Hon. Karl V Fink, and Hong Oo Baak as Panelists.
Complainant requests that the disputed domain name <monroe.co> be transferred from Respondent to Complainant.
A. Complainant
Annexed to the Complaint were copies of six US trademark registrations for the word MONROE in the name of Complainant which, Complainant claims, are in full force, unrevoked, and not cancelled. It also claims that the mark is famous and distinctive, and that there are common law rights in the MONROE name either alone or in combination with designs and/or other marks, due to the long, extensive, and exclusive use of it by itself or by its predecessors in business.
Complainant also owns the domain name <monroe.com>, and claims that the website at this address includes repeated usages of the MONROE trademark in association with shocks and struts, amongst other things. The website also contains a box labeled DEALER LOCATOR whereat a user can enter a zip code and find a MONROE dealer in his/her area. Complainant contends that anyone entering the zip code for Respondent will find at least 12 MONROE dealers in the area.
On this basis, Complainant alleges that the disputed domain name is identical or confusingly similar to its registered and common law marks.
Complainant further contends that Respondent has no legitimate rights or interest in the disputed domain name because it is never commonly referred to as MONROE, and because it has never used any trademark or service mark in commerce that is identical or similar to its own MONROE registered and common law marks.
Complainant alleges that Respondent is acting in bad faith and using its own trademark without its permission because –
· It is using the disputed domain name to attract, for commercial gain, internet users to its website;
· It is offering to sell the disputed domain name;
· It has a pattern of registering the trademarks of others as domain names. In this regard Complainant refers to a decision involving another .co name in which Respondent was the Respondent and notes that although the suffix ‘.co’ relates to Colombia, Respondent is registered in the USA and not Colombia.
B. Respondent
Respondent’s Response took the form of a single page letter which is reproduced here in full –
I hereby by submit my response to the complaint regarding the domain monroe.co
Firstly- my apology for submitting this response very last minute. I had sent a request today requesting an extension of week for me to submit the response. But, as per advice from Miss Alexandra, I could not do it at an expense of $100. So instead, here is my response.
First and foremost – I would like to mention that the knowledge I have now regarding cyber-squatting I not what I had about a year ago. Even though, I did know and understand the right of trade mark like google or Microsoft or yahoo or such. But words like monroe or Michael are such that people can file trademark on such words or its derivatives and others cannot use in one form or the other.
Having queried the word Monroe on USPTO, I found out 201 entries with the word Monroe and not all are under the ownership of Tenneco. Out of 201, 85 are live or unexpired or not cancelled otherwise by USPTO. However, only 6 are owned by Tenneco.
Web searches on google for the word “Monroe” yielded 132 million entries and of course not all refer to Tenneco. The same search on Bing resulted in 40 million entries, again not all referring to Tenneco.
There are websites who are using the same name as Monroe in form or the other and publicly using it for commercial benefit and also announcing on the website that the domain name is for sale.
Every citizen has right to use what is part of the USA. There are at least 7 states with cities named Monroe and at least 9 states with county name “Monroe” and my town, city of Houston, has popular and well Known Street named Monroe.
Our intentions are clear as per .Co internet registration guidelines and advertisement; we registered some names that could benefit us in form or the other. We have caused no harm to Tenneco or its brand Monroe.com.
I am really sorry for such unorganized and un-itemized response. I sincerely apologize for that. Should the respected panel of the honorable judges allow me an opportunity to organize and label all the exhibits; I could resubmit the response along with proper mention of supporting exhibits.
Attached to this letter were about 50 pages of search reports, maps, and copies of other domain names containing the word ‘monroe’ or the phonetic equivalent thereof. Many of these pages were duplicated.
Complainant is a well established maker of motor vehicle parts which it sells under the brand name MONROE throughout the USA and Canada.
Respondent has provided no information about its business. It is based in Sugar Land, Texas.
The fact that this case involves a domain name registered in Colombia is of no relevance as the Policy is worldwide and Respondent’s registrar has confirmed that it is bound by the Policy.
Paragraph 15(a) of the UDRP 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.
Complainant has produced copies of the following six US trademark registrations for the word MONROE. In three of these the name is displayed in block capitals while the other three have the word in block capitals but with a device at each end which comprises four horizontal stripes in the form of a reverse triangle.
MONROE No. 526842 dated June 27, 1950 for “Shock absorbers for the following articles – namely automobiles, trucks, busses, railway cars, and truck seats.”, first used October 31,1941.
MONROE and device No. 1914781 dated August 29 1995 for “Land vehicle suspension parts, namely struts”, first used in 1980.
MONROE No. 1927531 dated October 17, 1995 for “Land vehicle suspension parts, namely struts”, first used in 1980.
MONROE and device No. 2228132 dated March 2, 1999 for “Motor vehicle suspension parts namely shock absorbers”, first used September 12, 1975.
MONROE No. 3765163 dated March 23, 2010 for “Brake pads for land vehicles; Brake shoes for land vehicles; Brakes for land vehicles.”, first used in June 2005.
MONROE and device No. 3765164 dated March 23, 2010 for “Brake pads for land vehicles; Brake shoes for land vehicles;, Brakes for land vehicles.”, first used in June 2005.
These trademarks are identical to the disputed domain name <monroe.co> for, when comparing a domain name with a trademark for similarity, it is customary to ignore the prefix ‘www’ and any suffix such as a gTLD or, in this case, the ccTLD “.co”.
Respondent has not attempted to deny Complainant’s contention that its trademarks and the disputed domain name are identical, but attempts to minimize this fact by pointing out that it is perfectly legitimate to register domain names containing common words or names, that the word is common on the internet, as a registered trademark with only 6 out of 85 MONROE registrations being owned by Complainant, and in other domain names. Respondent also states that in the USA there at least seven States with cities named MONROE, that there are nine States with a county called MONROE, and that there is a well-known Monroe Street in Houston Texas.
Respondent claims that he is now more acquainted with cybersquatting than he was a year ago, but it is clear that this knowledge does not extend far enough, for he appears not to be aware that, as set out above, in order to prove its case a Complainant only has to prove that the domain name registered by Respondent is either identical or confusingly similar to a trademark or service mark in which Complainant has rights. In this case, Complainant has clearly established its long-standing rights in a trademark – MONROE – which is identical to the disputed domain name <monroe.co>.
Thus the Panel has no difficulty in finding that paragraph 4(a)(i) of the Policy is proved.
Complainant has not produced much in the way of arguments under this heading, but Respondent has said nothing to rebut Complainant’s claim – only that he has not harmed Complainant with his registration. This is actually not the case. The whole purpose of the Policy is to prevent cybersquatting. This is defined as registering, trafficking in, or using, a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. This is exactly what Respondent has done. It is irrelevant that the name Monroe is commonly used in a number of different ways, what is important here is that Complainant has legitimate rights in the name as a trademark which it has used for a variety of motor vehicle parts since at least 1941 and that Respondent has incorporated it into a domain name with a Colombian suffix. This is not permitted under the Policy, and Respondent has signed up to the Policy.
The Panel has therefore concluded that Respondent does indeed have no rights and no legitimate interest in the name MONROE as a domain name, and that paragraph 4(a)(ii) is therefore proved.
The Policy sets out, in paragraph 4(b) a number of examples of evidence of bad faith. The first of these is that the disputed domain name has been registered for the purpose of selling it. In this case, that is precisely what Respondent has done. Currently the website at the disputed domain name contains the following messages –
This domain is for sale.
If you are a serious buyer, please fill in the form below and click submit.
If the offer is not serious and as expected, may not be accepted. The offer amount must be greater than or equal to preset reserve on the domain name.
In addition, Respondent did exactly the same thing last year. Complainant annexed to the Complaint a copy of the decision in Kohl’s Department Stores, Inc. v. Naushad Dhukka/SoftDot Technologies, LLC, FA 1360851 (National Arbitration Forum January 10, 2011) in which the Panel found in favour of the Complainant and ordered the domain name <kohl’s.co> to be transferred.
The facts in that case were very similar to those in the present case and it is perhaps worth quoting the following passage from that Decision:
“While it may sound trite, the substance of the well worn cliché still rings true: ‘Ignorance of the law is no excuse.’ Likewise, taking the road that willfully or otherwise ignores the established rights of others, though paved with good intentions, does not generally lead to a desirable place. While it is understandable that Respondent wants reimbursement for its misspent resources, such a desire presents no basis for a defense in a UDRP matter.”
In all the circumstances, the Panel finds that paragraph 4(a)(iii) is proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monroe.co> domain name be TRANSFERRED from Respondent to Complainant .
David H Tatham, Hon. Karl V Fink, and Hong Oo Baak, Panelists
Dated: May 31, 2011
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