Mechoshade Systems, LLC v. DNS Admin / Mecho Investments
Claim Number: FA1805001784649
Complainant is Mechoshade Systems, LLC (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, USA.
Respondent is DNS Admin / Mecho Investments (“Respondent”), represented by Felix Ramirez of mecho.com, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mecho.com> (the “Domain Name”), registered with NameSilo, LLC (the “Registrar”).
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.
David H. Bernstein, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 1, 2018; the Forum received payment on May 1, 2018.
On May 2, 2018, the Registrar confirmed by e-mail to the Forum that the <mecho.com> domain name is registered with the Registrar and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Registrar’s 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 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2018 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@mecho.com. Also on May 4, 2018, 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 May 29, 2018.
Complainant’s Additional Written Submission (“additional submission”) was received on May 30, 2018, in compliance with Supplemental Rule 7.
On June 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed as David H. Bernstein as Panelist.
Having reviewed the communications records, 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 states that it owns a United States Patent and Trademark Office (“USPTO”) registration of the MECHO mark (the “Mark”). Complainant states that the Mark was registered on May 19, 1986, and that it has continuously used the Mark in connection with its products and related services.
Complainant alleges that the Domain Name is identical or confusingly similar to the Mark. Complainant argues that the Domain Name confuses consumers as to the source and/or ownership of the website to which the Domain Name resolves, and is deceivingly attracting consumers to Respondent's website in violation of Complainant’s trademark rights.
Complainant states that Respondent has no rights or legitimate interests in the Domain Name. Complainant argues that it never authorized or consented to Respondent’s use of the Mark, that Respondent is not commonly known by the Domain Name or by the Mark, and that Respondent does not conduct any business under the Mark. Moreover, Complainant asserts that Respondent registered the Domain Name in bad faith, and is currently using the Domain Name in bad faith as a malicious website that misrepresents itself as secure.
B. Respondent
Respondent registered the Domain Name in 1999. It initially was registered in the name of Felix Ramirez; the registrant’s name was changed in 2008 to DNS Admin/Mecho Investments to reflect the use of the Domain Name by the family’s company, but the Domain Name has always been under the same ownership and control.
Respondent’s main contention is that the Domain Name is used for non-commercial purposes, specifically for Mr. Ramirez’s family’s personal and business email addresses, and to support the family’s company’s voice-over-IP (“VOIP”) communications services. Respondent asserts that, when it registered the Domain Name, it had no actual knowledge of Complainant’s Mark. Accordingly, Respondent argues, it registered the Domain Name in good faith, that it has legitimate rights in the Domain Name, and that it uses the Domain Name in good faith.
Respondent claims that it is has rights and legitimate interests in the Domain Name because it has been widely known by the @mecho.com email address for nearly 20 years, and conducts business under the name “Mecho Investments”.
Respondent claims that it independently came up with the Domain Name based on a personal family name (i.e., Mercedes “Mecho” Almonte Valdez). Respondent asserts that, in the Dominican Republic, the country from which Ms. Valdez is from, it is customary to refer to women with the first name “Mercedes” by the Spanish nickname “Mecho”. Respondent claims that the registration of the Domain Name was done purely to serve as an email address for the family while honoring their deceased family member.
Respondent submits evidence in the form of Google email snapshots (showing past use of @mecho.com email addresses for the sending and receipt of emails) and historical literature (showing that “Mecho” is indeed a common nickname in the Dominican Republic) to demonstrate rights and legitimate interests in the Domain.
Respondent asserts that it did not knowingly or willfully register the Domain Name to capitalize and trade on the goodwill associated with Complainant and Complainant’s Mark. Additionally, Respondent claims, it did not register, and does not currently use, the Domain Name in any way that would constitute bad faith under the Policy.
Based on the aforementioned facts, and Complainant’s nearly two decade delay in bringing this challenge, Respondent asserts that Complainant has demonstrated a prima facie case for Reverse Domain Name Hijacking (“RDNH”).
C. Additional Submissions
In its additional submission, Complainant alleges that Respondent’s use of the Domain Name for a common internet activity such as email cannot serve as a basis to supersede Complainant’s trademark rights. In addition, Complainant claims to have been, for many years, unaware of the Respondent’s Domain Name registration. Accordingly, Complainant suggests that the time between Respondent’s registration of the Domain Name, and the filing of this UDRP Complaint, should not be imputed negatively to the Complainant.
Because Complainant sought a finding of RDNH, and because Complainant used the additional submission to address the allegations underlying the claim of RDNH, the Panel has accepted and considered the additional submission.
Complainant is a designer and manufacturer of a wide range of window solar shading systems and room darkening solutions. Complainant has established that it currently owns protectable rights in the Mark as a result of its federal registration with the USPTO.
Respondent registered the Domain Name in 1999 to use as a family email server in honor of a deceased family member, Mercedes “Mecho” Almonte Valdez. Respondent’s noncommercial use of the Domain Name does not compete with Complainant’s business.
When it filed its Additional Submission, Complainant was well aware of the facts that: (i) Respondent is engaged in a legitimate business which does not compete directly with Complainant; (ii) that the Domain Name corresponds to the name of Respondent’s business; (iii) that the Domain Name was named after a deceased family member; and (iv) that the Domain Name was being used for noncommercial purposes.
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 alleges it has rights in the Mark based upon its registration with the USPTO (Reg. No. 1,428,413, registered Feb. 10, 1987). Notwithstanding Respondent’s arguments to the contrary, the Panel finds that Complainant’s registration of its Mark with the USTPO is sufficient to establish Complainant’s rights in the Mark pursuant to Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, Case No. FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Respondent has not articulated any basis for believing that the registration is invalid or should be cancelled.
Complainant correctly contends that the Domain Name is identical to Complainant’s Mark. The Domain Name incorporates Complainant’s Mark in its entirety. The addition of a gTLD to a mark is not sufficient to distinguish the resultant domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Tupelo Honey Hospitality Corporation v. King, Reggie, Case No. FA 1732247 (Forum July 19, 2017) (holding that the “addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
For these reasons, the Panel concludes that the Domain Name is identical to a mark in which the Complainant has rights pursuant to Policy ¶ 4(a)(i).
Because the second factor requires Complainant to prove a negative, it is sufficient for Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), at which point the burden shifts to Respondent to come forward with evidence showing that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp., Case No. FA 780200 (Forum Nov. 2, 2011) (finding that complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name for three reasons: (i) Complainant has not licensed or otherwise authorized Respondent to use its Mark in a domain name; (ii) Respondent is not commonly known by, and does not conduct business under, the Domain Name; and (iii) Respondent does not use the Domain Name in any manner that would constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. These allegations are sufficient to meet Complainant’s obligation to present, at the minimum, a prima facie showing that Respondent lacks rights or legitimate interests.
Respondent, however, has persuasively rebutted that showing with credible evidence that it does have rights and legitimate interests in the Domain Name. Respondent has explained that it is commonly known by the Domain Name because it does business under the name “Mecho Investments” (in particular, Respondent states that it runs a micro-enterprise under this name that was established in 2003 and provides VOIP communications services for Mr. Ramirez’s family and other micro-enterprises). Respondent also explains, and has substantiated with documentary exhibits, that it has used the Domain Name as part of its @mecho.com email addresses for nearly twenty years. Lastly, Respondent contends that it does not use the Domain Name commercially to compete with Complainant and or its business. In its additional submission, Complainant did not refute these facts.
Respondent has also persuasively shown that it selected this Domain Name in honor of a deceased family member. Respondent has provided the Panel with credible evidence that, in the Dominican Republic, women named Mercedes are referred to by the nickname “Mecho.” When coupled with Respondent’s claim that it has not made any attempts to monetize or in any way benefit from potentially mistaken web traffic, this evidence refutes Complainant’s assertion that Respondent registered, and currently uses the Domain Name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of its website. Tellingly, Complainant has not refuted this evidence in its additional submission.
Furthermore, the Panel is skeptical of Complainant’s bald assertions – unsupported by any factual evidence – that Respondent’s registration and use of this Domain Name is causing, or is likely to cause, confusion. Given that Respondent does not compete in any way with Complainant, and there is nothing of a confusing nature on the website to which the Domain Name resolves, there is no basis at all to conclude that confusion is likely. Indeed, despite nearly two decades of coexistence, Complainant has not cited to a single incident of confusion.
Accordingly, the Panel finds that Respondent’s noncommercial use of the Domain Name for Mr. Ramirez’s family’s micro-enterprise and email addresses, selected to honor a deceased family member, Mercedes “Mecho” Almonte Valdez, demonstrates Respondent’s rights or legitimate interests in the Domain Name under paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain‑name holder of a domain name”. See also Rule 15(e).
Respondent alleges that Complainant acted in bad faith in filing and pursuing this Complaint, which constitutes RDNH. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the Domain Name, of its rights to use the Domain Name. Respondent also argues that the length of time that Complainant waited before initiating this dispute indicates it had implicitly accepted the registration and use of the Domain Name.
The Panel does not agree that the passage of time is itself evidence of RDNH, nor does the mere passage of time constitute acquiescence or laches under the Policy. However, Respondent is correct that Complainant’s allegations are so weak that Complainant must have known – and at the minimum should have known – that its Complaint had no chance whatsoever of success.
On its face, the Complaint was woefully deficient. Its allegations of bad faith were themselves insufficient, and even in the absence of a Response, would have led to the rejection of this Complaint.
Complainant compounded its bad faith with its additional submission. In its Response, Respondent persuasively explained the origin of Respondent’s use of “mecho’” in the Domain Name (it was Mr. Ramirez’s grandmother’s nickname), provided proof of its legitimate use of the Domain Name, denied any knowledge of Complainant’s trademark rights (which itself eviscerates any possible finding of bad faith registration), and credibly showed that there was no bad faith use of the Domain Name (either under the examples listed in the Policy or otherwise). Instead of acknowledging these points, Complainant continued to pursue this case, including with the frivolous and demonstrably incorrect argument that use of a Domain Name for purposes of a family email address is not a legitimate interest. Although using a domain name in an email address may be evidence of bad faith when the emails are being used for fraudulent or otherwise illegal conduct, see, e.g., Smiths Group plc v. Lee Snooks, Case No. FA 1372112 (Forum April 20, 2017) (domain name used in bad faith where respondent used domain name in email address to impersonate employees and order mobile phones using complainant’s corporate account); Anheuser-Busch, Inc. v. Private Whois Service c/o budweiser-usa.com, Case No. FA 1335010) (Forum Aug. 16, 2010) (domain name used in bad faith where respondent used domain name as part of phishing scheme to collect personal information); Victoria's Secret Stores Brand Management, Inc. v. Private Whois victoriassecret-usa.com, Case No. FA 1415313 (Forum Dec. 20, 2011) (bad faith found where respondent used domain name in e-mail address to send fraudulent emails posing as Human Resources Manager for Victoria’s Secret), that is not the case here. Rather, this case is more analogous to cases finding the use of a domain name in an email address to be a legitimate interest when the name is based on a family name. See, e.g., Robert Bosch GmbH v. Domain Admin, Tucows.com Co., Case No. D2017-2549 (WIPO Feb. 28, 2018); International Raelian Religion v. Mailbank.com, Inc., Case No. D2000-1210 (WIPO April 4, 2001), Buhl Optical Co. v. Mailbank.com, Inc., Case No. D2000-1277 (WIPO March 1, 2001); see also Avery Dennison Corp. v. Sumpton, 189 F. 3d 868 (9th Cir. 1999).
At the bare minimum, after receipt of Respondent’s Response, Complainant knew or ought to have known that Respondent has rights or legitimate interests in the Domain Name, and that Respondent’s registration and use of the Domain Name could not, under any fair interpretation of the available facts, been undertaken in bad faith. Yet Complainant nevertheless persisted with its Complaint.
The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, Case No. FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it tried to use “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy); Genomatix Software GmbH v. Intrexon Corporation, D2010-0778 (WIPO July 8, 2010) ( “[The Panel finds that the Complaint in this case was made with a reckless disregard for the possibility that the Domain Name was registered in good faith. The Complaint does not contain any evidence to support the allegation that the Domain Name was registered in bad faith. Nor does the Complainant's submission following the Panel's Procedural Order. In all the circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."); Pick Enterprises, Inc. v. Domains by Proxy, LLC, Case No. D2012-1555 (WIPO Sept. 22, 2012) (finding RDNH in light of complainant’s “objectively groundless” complaint")
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David H. Bernstein, Panelist
Dated: June 18, 2018
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