Marlin Steel Wire Products LLC v. Domains By Proxy, LLC / DomainsByProxy.com
Claim Number: FA1209001464971
Complainant is Marlin Steel Wire Products LLC (“Complainant”), represented by Eric J. von Vorys, Maryland, USA. Respondent is Domains By Proxy, LLC / DomainsByProxy.com (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marlinsteel.com>, registered with Godaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 27, 2012.
On September 28, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <marlinsteel.com> 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 October 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@marlinsteel.com. Also on October 2, 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 October 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <marlinsteel.com> domain name is confusingly similar to Complainant’s MARLIN STEEL mark.
2. Respondent does not have any rights or legitimate interests in the <marlinsteel.com> domain name.
3. Respondent registered and used the <marlinsteel.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has sold steel wire products under its MARLIN STEEL mark since acquiring Marlin Steel Wire, Inc. in 1998. Marlin Steel Wire, Inc. had previously sold steel wire products under the MARLIN STEEL mark since as early as 1968. Complainant generates millions of dollars in revenue each year, selling steel wire products to consumers in thirty-six countries worldwide under the MARLIN STEEL mark.
Respondent registered the <marlinsteel.com> domain name on November 12, 2009. Respondent uses the disputed domain name to redirect visitors to <www.pornhub.com>, an adult-oriented website where users are invited to pay a fee to access additional content.
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 has not presented evidence of registration of the MARLIN STEEL mark with any trademark authority. However, past panels have found that a trademark registration is not necessary to show rights in a mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant can establish common law rights in the MARLIN STEEL mark under Policy ¶ 4(a)(i) by demonstrating that the mark has achieved secondary meaning as a result of Complainant’s continuous use of the mark. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). Complainant asserts that it has sold steel wire products under the mark since acquiring Marlin Steel Wire, Inc. in 1998, and that Marlin Steel Wire, Inc. had previously sold steel wire products under the MARLIN STEEL mark since as early as 1968. Complainant generates millions of dollars in revenue each year, selling steel wire products to consumers in thirty-six countries worldwide. Complainant provides evidence of media coverage of its MARLIN STEEL-branded operations in numerous television and print media outlets. Complainant also presents evidence of numerous industry awards which have been given to Complainant in connection with its operations under the MARLIN STEEL mark. In light of the evidence presented, the Panel finds that Complainant has established common law rights in the MARLIN STEEL mark under Policy ¶ 4(a)(i).
Respondent’s <marlinsteel.com> domain name merely omits the space between the words in Complainant’s MARLIN STEEL mark, and adds the generic top-level domain (“gTLD”) “.com.” Neither change is sufficient to distinguish the <marlinsteel.com> domain name from the MARLIN STEEL mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel finds that the <marlinsteel.com> domain name is identical to Complainant’s MARLIN STEEL mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that it has never authorized, licensed, contracted, or otherwise permitted Respondent’s use of the MARLIN STEEL mark. The WHOIS information identifies the domain name registrant as “Domains By Proxy, LLC / DomainsByProxy.com,” which bears no resemblance to the <marlinsteel.com> domain name. The Panel thus finds that Respondent is not commonly known by the <marlinsteel.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also alleges that Respondent’s use of the disputed domain name cannot be considered 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 asserts that the disputed domain name redirects visitors to <www.pornhub.com>, an adult-oriented website that is commercial in nature. Past panels have found no rights or legitimate interests where a disputed domain name is used to redirect users to an adult-oriented website. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s use of the <marlinsteel.com> 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <marlinsteel.com> domain name redirects visitors to <www.pornhub.com>, an adult-oriented website which is commercial in nature because users are invited to pay a fee to access additional content. By using an identical domain name, Respondent creates confusion as to Complainant’s endorsement of, or affiliation with, the disputed domain name. Respondent relies on this confusion to drive traffic to its website, which ultimately redirects to a commercial website. The Panel therefore finds that Respondent’s registration and use for this purpose represents bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent’s use of the <marlinsteel.com> domain name to redirect to an adult-oriented website tarnishes Complainant’s reputation, further demonstrating bad faith registration and use under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”). The Panel thus finds Respondent’s use of the <marlinsteel.com> domain name to redirect users to an adult-oriented website constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MARLIN STEEL mark in registering the <marlinsteel.com> domain name. Complainant argues that its MARLIN STEEL mark has been used “openly and extensively in commerce” and has been “featured in copious television news programs, business journals, and newspapers.” The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marlinsteel.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 6, 2012
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