Makri S.A. v. DomainJet, Inc.
Claim Number: FA1206001448539
Complainant is Makri S.A. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is DomainJet,Inc. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ileanamakri.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012.
On June 13, 2012, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <ileanamakri.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@ileanamakri.com. Also on June 19, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" 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 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
Complainant claims that it owns common law rights in the ILEANA MAKRI mark in connection with its line of jewelry and submits evidence that it applied to register its trademark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,561,505 filed March 6, 2012). Complainant also applied to register its MAKRI trademark with the USPTO (Serial No. 85,560,635 filed March 5, 2012). Additionally, Complainant claims rights in its MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark through registration with the USPTO (Reg. No. 3,199,113 registered January 16, 2007).
Complainant uses the ILEANA MAKRI mark to designate its jewelry line, which is marketed worldwide. Complainant opened its first store in 1987, selling jewelry made by designer Ileana Makri, under the business name of Makri. Numerous department stores currently carry the brand of jewelry. Complainant has invested large amounts of money to develop its products and has gained goodwill and customer loyalty in relation to the jewelry line and the ILEANA MAKRI mark.
Respondent registered the <ileanamakri.com> domain name on October 3, 2010. Respondent has no common law or statutory trademark rights to the MAKRI mark or the <ileanamakri.com> domain name, nor does Respondent have authorization to use the mark. The disputed domain name is identical and confusingly similar to Complainant’s MAKRI mark.
The <ileanamakri.com> domain name resolves to a website that leads to links for third-party commercial websites that also sell jewelry. Respondent does not have rights or legitimate interests in the disputed domain name, and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered the <ileanamakri.com> domain name with the intent to sell the domain name, as well as to “trick” consumers into visiting the resolving website. Respondent’s registration of the <ileanamakri.com> domain name was in bad faith. Respondent registered the disputed domain name with knowledge of Complainant’s rights in the MAKRI mark. Respondent diverted Internet traffic to Complainant’s competitors, thereby receiving a commercial profit and disrupting Complainant’s business.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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.”).
Complainant alleges that it owns trademark rights in its MAKRI S.A. FINE JEWELRY FOR NO SPECIAL OCCASION mark through registration with the USPTO (Reg. No. 3,199,113 registered January 16, 2007). Complainant also has a trademark registration with the European Union Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 0878472 registered October 24, 2005). The Panel finds that trademark registration with multiple trademark agencies throughout the world establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant asserts that it has common law rights in its ILEANA MAKRI or MAKRI marks. The Panel finds that Policy ¶ 4(a)(i) does not require trademark registration of a mark with a government authority for rights in the mark to exist. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that it owns common law rights in the ILEANA MAKRI mark in relation to the famous jewelry line. Complainant argues that it has filed applications for trademark registration of the marks with the USPTO and submits proof of the applications with the USPTO (Serial No. 85,561,505 filed March 6, 2012). Complainant argues that its founder, Ileana Makri, has used the ILEANA MAKRI mark in Greece at least as early as 1996 and in the U.S. at least as early as 1999, as well as in several other countries internationally. Complainant asserts that Ileana Makri opened her first store in 1987 and introduced the ILEANA MAKRI signature jewelry line in that store in 1996. Complainant contends that the ILEANA MAKRI line was shortly thereafter picked up by Barneys in the U.S. and numerous other stores now carry the brand. Complainant asserts that its namesake jewelry designer developed products that have reached a level of recognition that has established Complainant’s common law rights for over two decades and the ILEANA MAKRI name is well-known in the industry. Complainant asserts that the ILEANA MAKRI branded jewelry has enjoyed strong customer recognition, with clients such as Uma Thurman, Jennifer Lopez, Heidi Klum, Lenny Kravitz, Faith Hill, Rita Wilson, Ashley Olsen, Courtney Cox, and Debra Messing. Complainant asserts that the ILEANA MAKRI mark is used in connection with Complainant’s website, <www.makri.gr>, which details the jewelry collections and showcases ILEANA MAKRI as the designer and innovator of the jewelry.
The Panel determines that Complainant’s use of the ILEANA MAKRI in connection with its jewelry line establishes a secondary meaning in the mark sufficient to prove common law rights pursuant to Policy ¶ 4(a)(i) dating back to 1987. See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name).
Complainant asserts that the <ileanamakri.com> domain name is identical and confusingly similar to the MAKRI marks. The Panel chooses to compare the disputed domain name with the ILEANA MAKRI mark, as opposed to Complainant’s asserted MAKRI, as the ILEANA MAKRI mark is the full mark. Complainant argues that Respondent’s disputed domain name adds the generic top-level domain (“gTLD”) “.com,” which is not a distinguishing feature of the domain name. The Panel also notes that the disputed domain name removes the space between the words of the mark. In Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006), the panel stated that the disputed domain name was identical to the complainant’s mark because the domain name eliminated the space between the terms and added the gTLD “.com,” which did not adequately differentiate the domain name from the complainant’s mark. The Panel finds that the <ileanamakri.com> domain name is identical to Complainant’s ILEANA MAKRI mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <ileanamakri.com> domain name because Complainant has not authorized or licensed Respondent to use Complainant’s marks for any purpose. The Panel also notes that the WHOIS information identifies “DomainJet, Inc.” as the registrant. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), stated that the respondent did not establish rights and legitimate interests in the disputed domain name because the respondent was not authorized to use the complainant’s mark and did not submit evidence showing that it was commonly known by the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the WHOIS information and other information in the record, including the complainant’s contention that it did not consent to the respondent’s use of the mark, did not indicate that the respondent was commonly known by the disputed domain name. The Panel determines that because Complainant did not authorize Respondent’s use of its ILEANA MAKRI mark and the WHOIS information discloses a different registrant name, Respondent is not commonly known by the <ileanamakri.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <ileanamakri.com> domain name in a way demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent attempts to “trick” Internet consumers into visiting its website instead of Complainant’s website and claims that the resolving website forwards users to a third-party “product” page which offers hyperlinks to competing commercial entities. The Panel concludes that maintaining a webpage containing hyperlinks to businesses offering similar products to those of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Complainant has proven this element.
Complainant argues that Respondent registered the <ileanamakri.com> domain name with the purpose of selling it, which Complainant claims amounts to registration and use in bad faith. Complainant provides evidence that Respondent had a listing on <sedo.com> with a space for interested buyers to make an offer to purchase the disputed domain name. In Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panel stated that an attempt to sell a domain name demonstrates bad faith. In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel found that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.” The Panel concludes that Respondent’s attempt to sell the disputed domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(i).
Complainant asserts that Respondent uses the <ileanamakri.com> domain name with the purposes of diverting and disrupting its business. Complainant argues that Respondent operates the resolving website in connection with hyperlinks to competitors in the jewelry industry, which demonstrates bad faith. The Panel finds that by using the disputed domain name to redirect Internet consumers to competitors of Complainant, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent makes a profit from the <ileanamakri.com> domain name by attracting Internet consumers and confusing them as to Complainant’s affiliation with the resolving website. Complainant contends that Respondent chose a designation that it knows to be similar to Complainant’s mark in order to attract Internet traffic to its website. The panel in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), found bad faith when the respondent’s domain name resolved to a website offering hyperlinks to websites that offered similar services to those of the complainant and took advantage of Internet user mistakes. In BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panel stated that the links displayed on the disputed domain name appear to be in competition for the same Internet users as those of the complainant, which was clearly an attempt by the respondent to create a likelihood of confusion as to the source of the website and its contents. The Panel concludes that Complainant demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) by making a profit by confusing Internet users and attracting Internet traffic to its website.
Complainant contends that Respondent knew of Complainant’s rights in its ILEANA MAKRI mark at the time Respondent registered the <ileanamakri.com> domain name. Complainant argues that Respondent’s awareness of the mark is demonstrated by the contents of the resolving website, which contains jewelry advertising in competition with Complainant’s business. The Panel finds that Respondent therefore had actual knowledge of Complainant’s rights in the ILEANA MAKRI mark, which supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven 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 <ileanamakri.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 27, 2012
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