Motion Industries, Inc. v. walter davids
Claim Number: FA1505001617935
Complainant is Motion Industries, Inc. (“Complainant”), represented by Casondra K. Ruga of Alston & Bird LLP, California, USA. Respondent is walter davids (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <motionindustriesinc.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2015; the Forum received payment on May 5, 2015.
On May 6, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <motionindustriesinc.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 May 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2015 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@motionindustriesinc.com. Also on May 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 has long used the MI MOTION INDUSTRIES mark to facilitate its marketing of various products, including hydraulic and pneumatic power systems, bearings, mechanical and electrical power transmission equipment, conveying and elevating equipment, fluid power transmission equipment and hose products.
Complainant holds a registration for the MI MOTION INDUSTRIES service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,607,074, registered August 13, 2002).
Respondent registered the domain name <motionindustriesinc.com> on December 1, 2012.
The domain name is confusingly similar to Complainant’s MI MOTION INDUSTRIES mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no connection or affiliation with Complainant, nor has it at any time received from Complainant a license or other authorization to use the MI MOTION INDUSTRIES mark in a domain name or in any other manner.
Respondent has used the resolving website in an attempt to pass itself off as Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered the <motionindustriesinc.com> domain name while knowing of Complainant and its rights in the MI MOTION INDUSTRIES mark.
Respondent uses the domain name in order to host e-mail addresses through which Respondent organizes illegal drug importation in Australia.
Respondent registered and uses the domain name in bad faith.
B. Respondent
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."
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.
In view of Respondent's failure to submit a response, the Panel will decide this 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 rights in the MI MOTION INDUSTRIES service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <motionindustriesinc.com> domain name is confusingly similar to Complainant’s MI MOTION INDUSTRIES mark. The domain name contains the essential element of the mark, being differentiated only by the removal of the letters “MI,” and the additions of the term, “inc,” which signals Complainant’s corporate identity, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
Because a gTLD is required of all domain names, it is well established that the addition of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of a UDRP complainant in forming a contested domain name was irrelevant to a panel’s analysis of the complaint).
On the point of removing one or a few non-essential letters from the mark of a UDRP complainant in crafting a domain name, see Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to a complainant’s G GRANAROLO mark).
Likewise, the addition of the common corporate abbreviation “inc” to the mark of a UDRP complainant in a fabricated domain name does not escape a finding of confusing similarity. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not avoid the conclusion of confusing similarity).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <motionindustriesinc.com>, and that Respondent has no connection or affiliation with Complainant, nor has it at any time received from Complainant a license or other authorization to use the MI MOTION INDUSTRIES mark in a domain name or in any other manner. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “walter davids,” which does not resemble the domain name. on this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), finding, under ¶ 4(c)(ii), that:
Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.
WE next observe that Complainant asserts, without objection from Respondent, that Respondent has used the <motionindustriesinc.com> domain name to pass itself off as Complainant. This use of the domain name is neither a bona fide offering of goods or service under Policy ¶ 4(c)(i) nor a noncommercial or fair use under ¶ 4(c)(iii), either of which could confer rights to or legitimate interests in the domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding, under Policy ¶¶ 4(c)(i) and 4(c)(iii), that a respondent’s attempt to pass itself off as a UDRP complainant online, in a blatant unauthorized use of that complainant’s mark in a domain name, was evidence that that respondent had no rights to or legitimate interests in the domain name).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered the contested <motionindustriesinc.com> domain name while knowing of Complainant and its rights in the MI MOTION INDUSTRIES mark. Under Policy ¶ 4(a)(iii), this stands as proof of Respondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding, under Policy ¶ 4(a)(iii), bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s YAHOO! mark at the time of registration).
We are also convinced by the evidence that, as alleged in the Complaint, Respondent uses the <motionindustriesinc.com> domain name to host e-mail addresses through which Respondent has organized illegal drug importation in Australia. This independently demonstrates Respondent’s bad faith in the registration and use of the domain name. See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using a disputed domain name to support an e-mail address employed to pass a respondent off as a UDRP complainant in a phishing scheme was evidence of bad faith registration and use). See also Smiths Group plc v. Snooks, FA1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that a respondent registered and used a disputed domain name in bad faith by impersonating an employee of a UDRP complainant to make cell phone purchases using that complainant’s account).
The Panel thus finds that Complainant has met its obligations of proof under 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, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <motionindustriesinc.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 11, 2015
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