Materia, Inc. v. Michele Dinoia
Claim Number: FA1507001627209
Complainant is Materia, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York. Respondent is Michele Dinoia (“Respondent”), represented by Roberto Manno, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <materia.com>, registered with Name.com, Inc.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2015; the Forum received payment on July 2, 2015.
On July 6, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <materia.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 July 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@materia.com. Also on July 7, 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.
A timely Response was received and determined to be complete on July 24, 2015.
Complainant submitted a timely Additional Submission, which was received and determined to be complete on July 31, 2015. Pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the MATERIA trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,660,046, first use in commerce 1999, filed Aug. 22, 2012, registered Dec. 23, 2014). Complainant also asserts unregistered common law rights in the MATERIA trademark dating back to at least 1999. The mark is used in connection with the sale of various goods or services in the catalyst technology industry. The <materia.com> domain name is identical to its MATERIA trademark because the only difference between the domain name and the mark is the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage containing unrelated third party hyperlinks. Also, Respondent has offered the <materia.com> domain name for sale.
Respondent has engaged in bad faith registration and use. Respondent is attempting to sell the domain name for excess its out-of-pocket costs. Respondent has engaged in a pattern of bad faith registrations. Respondent is also attempting to commercially gain from a likelihood of confusion. Lastly, Respondent had actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent makes no contention with regard to whether the disputed domain name is identical or confusingly similar, nor does Respondent object to Complainant’s registration rights. Respondent does contend that Complainant has not provided sufficient evidence of secondary meaning, and thus does not have common law rights in the MATERIA trademark.
Respondent has rights and legitimate interests. First, Respondent is a generic domain name reseller. Also, Respondent’s rights in the disputed domain name predate Complainant’s trademark rights. The disputed domain name is also comprised of a generic term over which Complainant does not have a monopoly of rights.
C. Complainant’s Additional Submission
Complainant asks that the Panel disregard Respondent’s arguments as Complainant has established common law and federal rights in the MATERIA mark under Policy ¶ 4(a)(i). While Respondent contends that it is a generic domain name reseller, such contention is belied by the fact that it does not wish to sell the disputed domain name.
(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;
(3) the domain name has been registered and is being used 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:
(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 registered the MATERIA trademark with the USPTO (e.g., Reg. No. 4,660,046, purportedly its first use in commerce was in 1999, filed Aug. 22, 2012, registered Dec. 23, 2014). The mark is used on or in connection with the sale of various goods or services in the catalyst technology industry. Complainant has continuously used MATERIA in connection with its goods and services since 1999 – a use that has resulted in Complainant’s catalysts being used by 30 of the world’s 50 largest chemical companies and 40 of the world’s 50 largest pharmaceutical companies.
The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel also finds that Complainant need not register its trademark in the country in which Respondent operates. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in another country.”). The Panel also sees rights which date back to the mark’s filing date pursuant to panel decisions like Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). While the filing date for the MATERIA mark appears to be August 22, 2012 which does not predate the registration of the disputed domain name, the Panel finds the date of first use in 1999 as compelling under Policy ¶ 4(a)(i). The Examining Attorney at the United States Patent and Trademark Office found Materia to be distinctive based on his approval of the Materia mark to publication and did not view the mark as generic.
Complainant asserts unregistered common law rights in the MATERIA trademark dating back to at least 1999. To establish common law rights under the UDRP, a complainant must show that the trademark has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). The Panel notes that Complainant has made allegations regarding the significant goodwill the MATERIA mark has obtained. Complainant has also provided a screenshot of its website, which features the MATERIA trademark, dating back to 2001. The Panel finds that Complainant has submitted evidence sufficient to establish common law rights under Policy ¶ 4(a)(i).
Complainant argues that the <materia.com> domain name is identical to its MATERIA trademark. Complainant notes that the only difference between the domain name and the mark is the affixation of the gTLD “.com.” Prior panels have found that the addition of “.com” to a domain name is irrelevant for purposes of analyzing whether a domain name is identical or confusingly similar to the mark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Additionally, Respondent does not object, and the Panel, thus finds that the <materia.com> domain name is identical to its MATERIA trademark under Policy ¶ 4(a)(i).
The Panel is reminded that 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). Complainant asserts that Respondent is not commonly known as the <materia.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the MATERIA mark in domain names. The Panel notes that “Michele Dinoia” is listed as the registrant of record for the disputed domain name. The Panel notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <materia.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this argument, Complainant notes that the domain name resolves to a webpage containing unrelated third party hyperlinks. The Panel notes that the domain name resolves to a webpage with links reading, among other things, “Materia,” “Plastic Injection Mold Machine,” “Green Architecture Design,” “Plastic Molders,” and “Plastic Extrusion Companies.” Prior panels have declined to award a respondent rights under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the resolving webpage contains unrelated third party hyperlinks. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.
Complainant also argues that Respondent’s lack of rights or legitimate interests because the <materia.com> domain name is for sale for excess out-of-pocket costs. Complainant contends that it offered both $10,000 and $50,000 to Respondent in exchange for the disputed domain name, but that the offers were not accepted, and Respondent demanded a sum greater than or equal to $100,000. Complainant has provided a set of emails that corroborate these assertions. Prior panels have found evidence of a lack of rights under Policy ¶ 4(a)(ii) where the respondent attempts to sell the domain name in dispute for excess its out-of-pocket costs in acquiring the domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name). The Panel finds that Respondent is attempting to sell the disputed domain name for excess its out-of-pocket costs, which is evidence of a lack of rights under Policy ¶ 4(a)(ii).
Additionally, Respondent claims to be a generic domain name reseller and asserts it has found success in previous UDRP decisions. However, Complainant argues that this case must be decided on its merits, especially as the disputed domain name in question is identical to the MATERIA mark, save for the gTLD addition. The Panel notes that Respondent’s appropriation of a mark in which Complainant has rights under Policy ¶ 4(a)(i) in a domain name rules against any legitimate business assertion of selling generic domain names. See Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”). Thus we reject Respondent’s argument and hold that this is a circumstance under which a bona fide offering of goods and services has not been evidenced, nor has a legitimate noncommercial or fair use been demonstrated as there is no assertion that the use of the <materia.com> domain name is non-profit.
Respondent does not dispute that she is in the business of warehousing domain names incorporating trademarks owned by others, that she is the owner of between 10,672 and 22,773 domain names, or that she lost in at least 50 UDRP decisions. Respondent also does not dispute that she is using the Disputed Domain Name to divert Internet users seeking information about Complainant’s Nobel Prize-winning catalyst technology and related services to her website containing third-party advertisements and sponsored listings to generate revenue through click-through fees.
Respondent claims that she has rights or legitimate interests in the Disputed Domain Name. Respondent fails to explain what legitimate interest a “famous domain name trader,” which she is, would have in a domain name if not to sell it. Nor does she dispute Complainant’s assertion that she created a general offer to sell the Disputed Domain through the link clearly labeled “Inquire about this domain” appearing on MATERIA.COM. Respondent also does not dispute Complainant’s assertion that she openly discussed selling MATERIA.COM with the domain broker hired by Complainant. Respondent admits that she refused to sell the domain name for less than six figures.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering the domain name for sale. Complainant again notes that it offered both $10,000 and $50,000 to Respondent in exchange for the disputed domain name, but such offers were not accepted unless Complainant offered $100,000 or more. Complainant has provided a set of emails that corroborate these assertions. Prior panels have found bad faith under Policy ¶ 4(b)(i) where the respondent offers the domain name for sale for excess out-of-pocket costs. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). The Panel finds that Respondent is attempting to sell the domain name for excess its out-of-pocket costs, and finds bad faith under Policy ¶ 4(b)(i).
Complainant also claims that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. Complainant has provided the Panel with several instances where Respondent was a named party. Prior panels have found evidence of bad faith where the complainant has shown that the respondent has been subjected to UDRP proceedings in the past. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel finds bad faith under Policy ¶ 4(b)(ii).
Complainant also claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes a likelihood of confusion exists because the MATERIA mark appears on the resolving webpage. Complainant further adds that Respondent must be profiting from pay-per-click fees. Where a likelihood of confusion has been created, and it has been shown that the respondent is profiting, prior panels have found bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel finds that a likelihood of confusion exists, that Respondent is profiting, and finds bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had actual knowledge of Complainant's rights in the MATERIA trademark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. The Panel concludes that Respondent had actual notice of Complainant's mark, and finds that the disputed domain name was registered in bad faith under 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).
Respondent is a well-known cybersquatter and typosquatter. She does not merely trade in supposedly generic or descriptive domain names. She has a history of cybersquatting and typosquatting by purchasing domain names – like MATERIA.COM – containing prominent third-party trademarks (or common misspellings thereof). See, e.g., AnheuserBusch, Incorporated v. Michele Dinoia, FA0206000114465 (Nat. Arb. Forum 2002).
In addition, Respondent’s failure to make any legitimate use of this domain name since it was registered along with her failure to identify any good faith intent to use the domain name evidences bad faith use and registration of the Disputed Domain Name. See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum 2000).
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), and that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). Indeed, Complainant has acted in good faith by its presentation of rights in the MATERIA mark which date back to 1999.
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 <materia.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: August 20, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page