Michigan Education Special Services Association v. Michele Vassalli / Hometecno sagl
Claim Number: FA1805001789332
Complainant is Michigan Education Special Services Association (“Complainant”), represented by James R. Duby of DUBY LAW FIRM, Michigan, USA. Respondent is Michele Vassalli / Hometecno sagl (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <the-messa.com> and <la-messa.com>, registered with Wild West Domains, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On May 31, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <the-messa.com> and <la-messa.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@the-messa.com, postmaster@la-messa.com. Also on June 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 June 19, 2018.
On June 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
MESSA is the owner of the U.S. Federal Certificate of Registration for the mark MESSA, U.S. Reg. No. 2708651 registered on April 22, 2003. MESSA has and continues to use the mark MESSA connection with health insurance administration, brokerage, and underwriting for educational employees in Class 36 and has done so in interstate commerce since at least as early as April 15, 1997.
MESSA has successfully filed its Sections 8 & 15 Affidavit of Use and Incontestability with the U.S. Patent and Trademark Office which was accepted and acknowledged on May 9, 2008. MESSA has successfully renewed its Registration by timely filing its combined Sections 8 & 9 Renewal accepted and acknowledged as of July 12, 2012. MESSA registered the domain name <messa.org> on June 15, 1996.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] THE RESPONDENTS’ DOMAIN NAMES THE-MESSA.COM AND LA- MESSA.COM ARE ESSENTIALLY IDENTICAL AND/OR CONFUSINGLY SIMILAR TO MESSA’S FEDERALLY REGISTERED MARK MESSA.
UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The Respondent has registered and/or is using the domain names <THE-MESSA.COM> and <LA-MESSA.COM> but such registration and/or use has been no earlier than June 24, 2014 to divert users to a unauthorized links to MESSA’s Michigan insurances services and other unrelated pay per click advertisements which only now have been disabled in response to our May 23, 2018 Notice of Claimed Infringement filed with the Registrar and the Respondent.
MESSA has openly and continuously used its U.S. federally registered mark “MESSA” in connection with health insurance administration, brokerage, and underwriting for educational employees in Class 36, titled TRADEMARK/SERVICE MARK INFORMATION as contained in this Complaint, in interstate commerce at least as early as April 15, 1997. Therefore, MESSA has established its prior use and its exclusive nationwide right to use its famous mark “MESSA.”
MESSA registered its domain name MESSA.ORG on June 15, 1997. Thus, MESSA has also established its prior use and exclusive nationwide right to use its domain name/mark MESSA.
MESSA does not allow or license unauthorized parties to use its marks as part of its domain names.
Given the above, the domain names <THE-MESSA.COM> and <LA-MESSA.COM> themselves are essentially identical and/or confusingly similar to MESSA’s U.S. registered mark MESSA based on the following additional grounds:
(i) The Respondent’s domain names are essentially identical and/or confusingly similar to MESSA’s registered mark “MESSA” given the domain names in dispute are merely the MESSA mark owned and registered by the Complainant except for the addition of the descriptive/generic terms “THE” and “LA” and a “-“, and the top level domain name “.com.” See TECHSMITH COPORATION v. WAYNE DIXON / FIVE STAR IMPACT LLC, FA1511001647296 (Nat. Arb. Forum December 14, 2015) finding that the at-issue <mediasnagit.com> domain name contains Complainant’s entire SNAGIT trademark prefixed with the generic term “media.” The domain name concludes with the top-level domain name “.com.” However, the trivial differences between Respondent’s domain name and Complainant’s SNAGIT trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <mediasnagit.com> domain name is confusingly similar to Complainant’s SNAGIT mark under Policy ¶4(a)(i). See also TechSmith Corporation v. Linda Lucia, FA1301001479401 (Nat. Arb. Forum February 28, 2013) finding that the at-issue domain name is merely the Snagit mark with the addition of the generic term “now” and the top level domain name “.com.” These distinctions between the at-issue domain name and Complainant’s trademark are ineffective in removing the two domain names from the realm of confusing similarity. Therefore, the Panel concluded that Respondent’s <snagitnow.com> domain name was confusingly similar to Complainant’s Snagit mark under Policy ¶4(a)(i) citing Hewlett-Packard Co. v. Jinsu Kim, FA 98012 (Nat. Arb. Forum. Sept. 5, 2001) (finding that the generic term “now” in the <hpnow.com> domain name made the domain name confusingly similar to the HP mark); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As a result, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark for purposes of Policy ¶4(a)(i).see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). See Pascua Yaqui Tribe v. Registrant, FAO050100040817 (Nat. Arb. Forum March 8, 2005) citing Wal-mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO September 19, 2000) (finding that the failure for Complainant to register all possible domain names that surround the substantive mark does not hinder Complainant’s rights in the mark. Trademark owners are not required to create “libraries” of domain names in order to protect themselves. For consumers to buy things or gather information on the Internet, they take the easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with suffix “.com”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Circuit 2002). (Internet users searching for a company’s website often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by “.com”).
(ii) Respondent’s domain names fully incorporates the “MESSA” mark and only deviates with the addition of the generic top-level domain name (e.g. “TLD”) “.com,” and the addition of the descriptive/generic term “THE” and “LA” and “-“. The addition of “.com” and generic terms and “-“ to MESSA’s mark MESSA does not distinguish the domain name pursuant to ¶(4)(a)(i). See UBS AG v. LaPorte Holdings, Inc., FA0501000397672 (Nat. Arb. Forum February 21, 2005) citing Sony Kabushi Kaisa v. Inja, D2001409 (WIPO December 9, 2004) (finding that neither the addition of a descriptive word….nor the suffix “.com” detracts from the overall impression of the dominant part of the name, in each case namely the mark “Sony”). See also Doctors Signature Sales & Marketing Information Corp. d/b/a Life Force International v. The Life Force Center, FA0807001216435 (Nat. Arb. Forum September 16, 2008) (finding that the respondent’s changes to the Complainant’s mark Life Force by the addition of the generic term “Plan” and the generic top level domain “gTLD”) “.com” do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s <lifeforceplan.com> domain name is not sufficiently distinguished from the Complainants’ mark Life Force pursuant to Policy ¶(4)(a)(i)). See also Haas Automation, Inc. V. NoKOutmma, FA100500132604 (Nat. Arb. Forum July 14, 2010) (finding the domain name <usedcnchaas.com> is confusingly similar to the HAAS mark as it is well established that a domain name that contains a trademark in its entirety combined with generic terms is confusingly similar to the trademark); and see Superior Growers Supply, Inc. v. v. Ronnie Strobel, Supra FA0504000452438 (Nat. Arb. Forum May 22, 2005) (finding that the <sgs-hydroponics.com> domain name merely adds a hyphen and a generic or descriptive term that identifies Complainant’s registered SGS mark. The addition of a hyphen and the term “Hydroponics” to Complainant’s mark does not defeat a finding of confusing similarity); see also Marriott Int’l, Inc. v. Café Au Lait FA 93670 (Nat. Arb. Forum March 13, 2000) (finding that the Respondent’s domain name <marriott- hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
(iii) There is no need for the Respondent to usurp the service mark rights of MESSA to accomplish its alleged goal. See State Farm Automobile Insurance Company v. Kyle Northway, 95404 (Nat. Arb. Forum October 11, 2004). The use of the MESSA service mark and domain name whether or not additional language, characters, or hyphens are added to the MESSA mark, is confusingly similar to MESSA service mark. The public could be mistakenly drawn to the Respondent’s diverted site, links, and parking/web pages by the confusingly similar domain name and any non-affiliation information would not be received until after the public had gone to that site. State Farm Automobile Insurance Company, Supra.
Thus, given that the domains <THE-MESSA.COM> and <LA-MESSA.COM> themselves are essentially identical and/or confusingly similar to MESSA’s U.S. registered mark MESSA, MESSA demanded on May 23, 2018 that the Respondent immediately cease and desist any and all use of the domain names <THE-MESSA.COM> and <LA-MESSA.COM> and any derivation of the same and to transfer the offending domain names to MESSA. To date MESSA has not received a response to the same from the Respondent, forcing the Complainant to file this Complaint.
[b.] THE RESPONDENT HAS NO RIGHTS OR LEGITMATE INTEREST WITH RESPECT TO THE DOMAIN NAME THE-MESSA.COM AND LA- MESSA.COM. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Respondent has not rights or legitimate interest with respect to the domain name <THE-MESSA.COM> and <LA-MESSA.COM> based on the following grounds:
The Respondent’s registration of the <THE-MESSA.COM> and <LA-MESSA.COM> domain name occurred well after the date MESSA started using the mark “MESSA” in the United States (e.g. Complainant’s date of first use being April 15, 1997 and Respondent’s date of first registration and/or use being no earlier than June 24, 2014); and well after MESSA registered its domain names (e.g. MESSA registered the domain name MESSA.com on June 15, 1996. MESSA was issued its U.S. federal Certificate of Registration for the mark on April 22, 2003).
Moreover, the Respondent is not commonly known by <THE-MESSA.COM> and <LA- MESSA.COM>. The Respondent is not known by the domain name prior to the registration of the domain name given, that MESSA used its mark for over 20 years prior to the Respondent’s registration of the disputed domain name and was also issued its federal U.S. Certificate of Registration for the mark MESSA prior to the Respondent’s registration of the disputed domain name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶4(c)(ii) (“to require a showing that one has been commonly known by the domain name prior to the registration of the domain name”).
In addition, the Respondent’s WHOIS Information identifies the Registrant as Michele Vassalli/Hometecno sagl as to the domain names <THE-MESSA.COM and <LA- MESSA.COM> and the Complainant has not authorized the Respondent/Registrant, to use its MESSA mark. Thus, the Respondent, is not commonly known by the disputed domain names. See Haas Automation, Inc. V. noKOoutmma, FA 1005001326071 (Nat. Arb. Forum July 14, 2010) (finding where the Complainant has not authorized the Respondent to use its marks, and where the WHOIS information does not indicate that the Respondent is known by the disputed domain name, the Respondent is not commonly known by the disputed domain name. Citing Braun Corp. Lonely, FA 699652 (Nat. Arb. Forum July 7, 2006). See also Superior Growers Supply, Inc. v. HOMEHARVESTS.COM, FA0712001125171 (Nat. Arb. Forum February 25, 2008) (finding the disputed domain name is being used to redirect Internet users to the <brecks.com> website and given that Complainant has asserted that Respondent has never been authorized or licensed to use the HOME HARVEST mark, the Respondent is not using the domain name in connection with a bona fide offering of goods and services nor is the Respondent commonly known by the domain name). See State Farm Mutual Automobile Insurance Co. v. Douglas LaFaive, FA0008000095407 (Nat. Arb. Forum September 27, 2000) (finding that the unauthorized providing of information and services under a mark owned by a third party cannot be said to be a bona fide offering of goods and services); See also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum January 23, 2001 (finding that the Respondent did not have rights or a legitimate interest in a domain name when the Respondent is not known by the mark). See also TechSmith Corporation v. Dina Methoes / V&L Technologies, FA1508001632286 (Nat. Arb. Forum September 22, 2015) in which the Panel found no basis upon which to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); and see TechSmith Corporation v. WAYNE DIXON / FIVE STAR IMPACT LLC, FA1511001647296 (Nat. Arb. Forum December 14, 2015) reasoning the WHOIS information for the at-issue domain name lists “WAYNE DIXON” and “FIVE STAR IMPACT LLC” as the domain name’s registrant and registrant organization and there is nothing in the record that otherwise suggests that Respondent is commonly known by the <mediasnagit.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶4(c)(ii); and finally see Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Rather the Respondent is/was intentionally using the domain name for commercial gain and/or to disrupt the business of MESSA by misleadingly diverting consumers to a <THE-MESSA.COM> and <LA-MESSA.COM> associated with unauthorized links to MESSA insurance services and unrelated products and services which it is believed that the Respondent/registrant was receiving pay per click revenue in connection with the same which is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See TECHSMITH CORPORATION v. WAYNE DIXON / FIVE STAR IMPACT LLC, FA1511001647296 (Nat. Arb. Forum December 14, 2015) finding that the Respondent’s <mediasnagit.com> domain name addresses a webpage containing pay-per-click links to unauthorized sources of Complainant’s products as well as links to competitors of Complainant. The <mediasnagit.com> website, displays links such as “Special Snagit Promo Code,” “All- New Adobe Captivate 9,” “Record Screen Free,” and, “Snagit Screen Capturing.” Using the confusingly similar domain name in this manner suggests neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii), citing Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also, Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). See also TechSmith Corporation v. Dina Methoes / V&L Technologies, FA1508001632286 (Nat. Arb. Forum September 22, 2015) that reasoned that prior panels have found that there is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use, where the website resolving from the disputed domain name links to products and services that compete directly with Complainant’s business, and where the respondent presumably receives referral fees. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process). Thus, the panel in TechSmith Corporation v. Dina Methoes / V&L Technologies found that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶4(c)(i) and Policy ¶4(c)(iii). See also Microsoft v. Mike Morgan, FA1012001364809 (January 24, 2011) citing See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); and see also Microsoft Corporation v. K E HENRY, FA1012001364807 ( Nat. Arb. Forum January 25, 2011)(finding that Respondent did not use the <kinectshoponline.com> domain name to make 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). See also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per- click referral fee did not evidence rights or legitimate interests in the domain name); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). Further, the use of a confusingly similar domain name for a website displaying links that are unrelated to Complainant “is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain.” Nucor Corporation v. LUIS ALONZO MURO, FA 1580989 (FORUM Oct. 26, 2014); see also Black & Decker Corp. Clinical Evaluations, FA 112629 (FORUM June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); The Coca- Cola Company v. Whois Privacy Service, D2010-0088 (WIPO Mar. 16, 2010) (no rights or legitimate interests in <cokezone.com> used for a parked website containing sponsored links; ordering transfer); The Royal Bank of Scot. Group Plc v. Demand Domains, FA 714952 (FORUM Aug. 2, 2006) (operation of a commercial web directory displaying various links to third-party websites not a bona fide offering of goods or services because respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
If the panel, however, now finds that the Respondent is inactively using the disputed domain names as a result of our submission of our Notice of Claimed Infringement to the Registrar, resulting in the domain names now resolve to a parking page that indicates “Sorry! This Site is not available.”, failure to make any use of the above-listed domain names shows that Respondent lacks legitimate rights in the same, Twitter, Inc. v. duan xiang wang, FA1609001695021 (FORUM Oct. 27, 2016) (inactive holding does not establish rights and legitimate interests). See also Kohler Co. v xi long chen, FA 1737910 (FORUM August 4, 2017) (Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s [domain name] resolves to an inactive webpage displaying the message “website coming soon!”).
Respondent may accomplish its alleged purpose of informing Internet users of Michigan health insurance without the use of MESSA’s mark MESSA in its domain names. See Superior Growers Supply, Inc. v. HOMEHARVESTS.COM, Supra FA0712001125171 (Nat. Arb. Forum February 25, 2008) (finding the Respondent’s use of the disputed domain name to redirect users to the <brecks.com> website, where competing gardening products and supplies are sold, is not a bona fide offering under Policy ¶(4)(c)(i) nor a legitimate non- commercial or fair use under Policy ¶(4)(c)(iii)). See also see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
The Respondent’s domain name is confusingly similar to MESSA’s mark MESSA and is used to redirect internet users to the <THE-MESSA.COM> and <LA-MESSA.COM> unauthorized links to MESSA’s health insurance services and links unrelated to MESSA which it is believed that the Respondent/registrant is/was receiving pay per click revenue in connection with the same. Such use has consistently and frequently been found not to be a bona fide offering of goods or services pursuant to ¶(4)(c)(i) or legitimate non- commercial or fair use pursuant to ¶(4)(c)(iii). See UBS, Supra. citing Toronto Dominion Bank v. Korpash, 188 Fed. Supp 2nd 120, 114 (D.MASS. 2002) (finding that because the Respondent’s sole purpose in selecting the domain names was to cause confusion with the Complainant’s website and marks, such use of the domain names were not in connection with the a bona fide offering of goods or services or any other fair use).
[c.] THE DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
The disputed domain name <THE-MESSA.COM> and <LA-MESSA.COM> should be considered as having been registered and being used in bad faith based on the following grounds:
(i) Respondent had and does have actual notice of MESSA’s registered mark MESSA prior to registering the <THE-MESSA.COM> and <LA- MESSA.COM> domain name. The Respondent’s prominent display of the MESSA’s mark MESSA on the pages resolving to the <THE- MESSA.COM> and <LA-MESSA.COM> domain name (e.g. “Michigan Messa Insurance…”, Messa Insurance Michigan”), demonstrates that the Respondent had actual knowledge of MESSA’s mark MESSA at the time the Respondent registered the <THE-MESSA.COM> and <LA- MESSA.COM> domain names. Thus, the Respondent registered the domain name in a manner that constitutes bad faith registration under the UDRP Policy ¶4(a)(iii). See 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 the Policy after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
(ii) Respondent is using the Complainant’s mark to attract the public to the <THE-MESSA.COM> and <LA-MESSA.COM> unauthorized links which it is believed that the Respondent/registrant is/was receiving pay per click revenue in connection with the same without permission of MESSA. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). See TechSmith Corporation v. WAYNE DIXON / FIVE STAR IMPACT LLC, FA1511001647296 (Nat. Arb. Forum December 14, 2015) reasoning that the Respondent registered the <mediasnagit.com> domain name knowing that Complainant had trademark rights in the SNAGIT trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark along with the fact that the mark was brashly displayed on Respondent’s <mediasnagit.com> webpage. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <mediasnagit.com> domain name in bad faith pursuant to Policy ¶4(a)(iii); and see. TechSmith Corporation v. Dina Methoes / V&L Technologies, FA1508001632286 (Nat. Arb. Forum September 22, 2015) reasoned that prior panels have found bad faith under Policy ¶4(b)(iv) where a respondent’s disputed domain name resolved to a website that offered links to third-party websites that offered products and services similar to the complainant’s, and where the respondent presumably commercially benefited from the disputed domain name by receiving referral fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Thus, the Panel in TechSmith Corporation v. Dina Methoes / V&L Technologies found Respondent’s actions support a finding of bad faith registration and use pursuant to Policy ¶4(b)(iv). See also Microsoft v. Mike Morgan, FA1012001364809 (Nat. Arb. Forum January 24, 2011) (The Panel finds that using the disputed domain name containing Complainant’s mark to host such competing pay-per-click links disrupts Complainant’s business and shows bad faith registration and use pursuant to Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
In addition, and/or in the alternative, the Respondent is and has used the domain name intentionally in an attempt to divert, for commercial gain, Internet users to the <THE-MESSA.COM> and <LA-MESSA.COM> unauthorized links which it is believed that the Respondent/registrant is receiving pay per click revenue in connection with the same without permission of MESSA resulting in the Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶4(b)(iv). See Microsoft v. Mike Morgan Claim Number: FA1012001364809 (January 24, 2011) finding that Respondent use of the Complainant’s well-known KINECT mark in the <wwwkinect.com> domain name to capitalize on the fame of the mark and attract Internet users to Respondent’s resolving website by creating a likelihood of confusion and populates the resolving website with competing pay-per-click links to similar or related products in order to commercially profit from this consumer attraction and the misappropriation of Complainant’s mark indicate bad faith registration and use according to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); See also Microsoft Corporation v. K E HENRY Claim Number: FA1012001364807 (Nat. Arb. Forum January 25, 2011(finding the Panel presumes that Respondent previously used the <kinectshoponline.com> domain name to profit from advertisement and click-through fees. Moreover, the Panel finds the disputed domain name is confusingly similar to Complainants’ KINECT mark. Therefore, the Panel determines that Respondent intentionally attempted 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, endorsement, or affiliation of Respondent’s website. As a result, the Panel finds that Respondent’s behavior constituted registration and use in bad faith under Policy ¶4(b)(iv). See also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay per- click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third- party websites demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)).See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv).
As a result, The Respondent’s web pages displaying/or displayed unauthorized links create a likelihood of confusion with MESSA’s service mark MESSA and domain name as to the source, sponsorship, affiliation, or endorsement of those links. Policy ¶4(b)(iv); see also Menard Inc. dba Menards v. ZeBo Limited, FA0112000102973 at 6 (Nat. Arb. Forum January 22, 2002) (finding that intentionally trying to divert Internet users to alternative sites is evidence of bad faith.) See Superior Growers Supply, Inc. v. Ronnie Strobel, Supra (finding that the Respondent has registered the domain names <superiorgrower.com> and<sgs- hydroponics.com> in bad faith to attempt to divert Internet users for commercial gain by attracting user to an alternative website through the likelihood of confusion of the Complaint’s Superior Growers Supply and SGS marks. See also eBay, Inc. v. Progressive Life Awareness Network, D2000-0068 (WIPO March 16, 2001) (finding bad faith where the Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the Respondent’s site).
Finally, if the Panel now determines that the disputed domain names are now inactive as a result of our submission of our Notice of Claimed Infringement to the Registrar and is now designated to a parking page that indicates “Sorry! This Site is not available.” such use would still be considered bad faith registration and use. See NYX, Los Angeles Inc. v. Neftali Mercedes, FA 1478214 (Nat. Arb. Forum Feb. 7, 2013)(bad faith use and registration shown where <nyxclique.com> resolved to parked page without content); and see Dermtek Pharaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (FORUM November 19, 2013) (finding, under Policy ¶4(a)(iii), that because a respondent’s website contained no content related to a contested domain name and instead generated the error message “Error 400- Bad Request,” that respondent had registered and used the domain name in bad faith).
B. Respondent
RESPONSE TO FACTUAL AND LEGAL ALLEGATIONS MADE IN COMPLAINT
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i). [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 5(a).]
[Elements of the UDRP are as follows:]
[a.] [Specify in the space below the manner in which the domain name(s) is not/are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] Rule 3(b)(ix)(1); UDRP ¶4(a)(i).
Domain names disputed contains more characters and a “-“ sign before the name “messa” and the extension is “.com” (la-messa.com; the-messa.com) while the one from complainant is “.org” (messa.org).
This important difference in the spelling of the name will lead to the typing errors of visitors to irrelevant and almost zero numbers.
There are several active domains in Internet containing the name “messa” with different orthography and extensions like (some of a big list):
messa.com.au themessagroup.com coldamessa.com
la-mesa.com newsite.messa.org messalaw.com whymessa.com messa.cofc.edu messarealestate.com
messa-fashion.blogspot.com costamessargv.com messalawncare.com messaeservices.org messa.rest.co.il
mesa.org messa.com
…
It seems rather presumptuous to claim that the owner of a registered trademark wants to claim rights over all internet domains that simply contain the name of his company, moreover the company name is not a proper name but an acronym of something.
Internet is a free world and given the limited number of usability of use of the names it is normal that there may be similarities and it is then up to the visitors of the websites to decide whether the domain sought is the right one or not. In addition, search engines greatly facilitate the effective search for the right websites.
A domain becomes misleading when the content of the website and its services are comparable to those proposed by another website whose domain name is similar, this is absolutely not the case here.
On the other side is interesting to notice that complainant domain name “MESSA.org” is registered identically and confusingly similar to the domain name “MESSA.com”. The most common method of locating an unknown domain name is simply to type in the company name or logo with suffix “.com. Internet users searching for a company’s website often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by “.com”. Because of that it could be a possible commercial gain to misleadingly divert consumers to Complainant's service mark “MESSA.org”.
In fact Compliant domain name “MESSA.org” has been registered almost 2 years after the domain “MESSA.com”.
[b] [Specify in the space below why the Respondent (domain-name holder) should be considered as having rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
We are legitimated to use the domains “la-messa.com” and “the-messa.com” for following reasons:
i. The name Messa in Italian is a proper name of the Catholic community, widely known and recognized for religious functions.
ii. The scope of both domains in the future is to offer to people a common Web Site which contains information and videos reproducing recorded religious functions, as a service to the Catholic community worldwide.
iii. The name MESSA is not famous worldwide name associated to a Trademark (like ex. HP, SONY, CANON, APPLE,MSN, COCA-COLA,…) , but only known in Michigan, as per Complainant statement,
Complainant is not commonly known by the domain name therefore he does not have rights or a legitimate interest in a domain name when he is not known by the mark.
iv. The future Web content of both our domains has nothing to do with the services provided by the complainant website, therefore in this case, there is a fair use of the domain name and no complainant’s Trademark Infringement nor the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
[c.] [Specify in the space below why the domain name(s) should not be considered as having been registered and being used in bad faith.] Rule 3(b)(ix)(3); UDRP ¶4(a)(iii).
There is absolutely no intention in infringe any Trademark, the MESSA.org is completely unknown to me and probably for most of the people around the World. The domains “the-messa.com” and “la-messa.com” are currently not active (not in use) as the project is under development. Both domains are parked at registrant courtesy web page and are not designated to any pay per click link or advertisements or “click-through” fees as per claim. There is absolutely no commerce or any type of revenue related to these domains.
The name Messa in Italian stands for MASS (Holy Mass) and is not an acronym of something like the company name reported by the compliant.
The name Messa in Italian is a proper name of the Catholic community, widely known and recognized for religious functions.
At the time of the domains registration I've been checking if the wished domain messa.com was still free but it was already taken according to Whois. Thus I've notice "la-messa.com" and "the-messa.com" (which name:;; means the same) were still free and I've registered them as compliant and proper to our future website content. The addition of "la-" and "the-" before Messa has been chosen because the complete name "la-messa" means ''the Holy Mass" in our native language.
Sad that the future activities related to both of my domains are completely different and not in contrast with the ones proposed by MESSA.org from Complainant.
There is no usurp of the service mark rights of MESSA to accomplish any alleged goal and both domain were not registered in bad faith.
(1) the domain names 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 names; and
(3) the domain names have been registered and are 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 Complainant prove the following three elements to obtain an order cancelling or transferring a 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; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the MESSA mark based upon registration of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g. Reg. No. 2,708,651, registered Apr. 22, 2003). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even though Respondent is located in a different country. See Home Depot Product Authority, LLC v. Sammy Yosef / Express Transporting, 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). Complainant’s registration of the MESSA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <the-messa.com> and <la-messa.com> domain names are confusingly similar to the MESSA mark because the names each contain the mark in its entirety and merely add an article, a hyphen, and the “.com” gTLD. Such changes are typically not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Transamerica Corporation v. Justin Gonzalez / Trans America, FA 1780545 (Forum May 14, 2018) (finding the addition of the article ‘the’ does not significantly distinguish a domain name from an incorporated mark for purposes of Policy ¶4(a)(i)); see also Reliable Credit Association, Inc. v. Invest Mutual, FA 1766542 (Forum Feb. 14, 2018) (“both the insertion of a hyphen [between terms of a mark] and affixation of a top-level domain name are generally immaterial to UDRP analysis under Policy ¶4(a)(i).”). The <the-messa.com> and <la-messa.com> domain names are confusingly similar to the MESSA mark under Policy ¶4(a)(i).
Respondent claims the <the-messa.com> and <la-messa.com> domain names are comprised of common and generic or descriptive terms which cannot be found to be confusingly similar to Complainant’s mark. The USPTO has found Complainant has rights to the mark. This Panel will not second guess a trademark validly issued by USPTO because that would exceed the Panel’s jurisdiction. See Sittercity Incorporated v. Domain Administrator, Claim Number: FA1206001450145 (Forum Aug. 15, 2012).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <the-messa.com> and <la-messa.com> domain names because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MESSA mark in any way. Absent information in the record to the contrary (and there is none in this case regarding this point), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Hometecno sagl,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Respondent has not been commonly known by the <the-messa.com> and <la-messa.com> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent’s lack of rights or legitimate interests in the <the-messa.com> and <la-messa.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). The domain names resolved until recently to a dynamic parking page with click through links (presumably pay-per-click links). Such use of a domain name does not create rights or legitimate interests under Policy ¶¶4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“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.”); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). Respondent does not have rights or legitimate interests in the <the-messa.com> and <la-messa.com> domain names.
Once Complainant reported the dynamic parking pages, the registrar company deactivated the associated parking pages. This means Respondent is currently inactively holding the <the-messa.com> and <la-messa.com> domain names. This continues to suggest Respondent does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the domain names under Policy ¶¶4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). While Respondent can demonstrate use without having a web site because a domain name can be used for an email server or the backend of an ecommerce portal, Respondent does not make that claim. Respondent does not have use the names in connection with any bona fide offering of good or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
Respondent vaguely suggests Respondent is getting ready to use the disputed domain names. They were registered on June 24, 2014, roughly four years ago. Respondent provides no further detail which would be sufficient to prove demonstrable preparations to use under Policy ¶(4)(c)(i) even if four years hadn’t passed without anything happening.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s bad faith is demonstrated by its use of the <the-messa.com> and <la-messa.com> to host dynamic parking pages with third party pay-per-click links. Using a domain name to resolve to a page of third-party links, including link to the complainant’s own website, demonstrates a respondent’s bad faith under Policy ¶¶4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel is not persuaded by Respondent’s claim the domain names were simply parked and Respondent has no role in picking the parked landing pages. Respondent elected to use the parking pages provided by Respondent’s registrar. That was Respondent’s free choice. Respondent is responsible to the links served up by its agent’s dynamic parking pages. Respondent has registered and used the domain names in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s current failure to use the <the-messa.com> and <la-messa.com> domain names is evidence of its bad faith. Inactive holding of a domain name is evidence of bad faith under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). The domain names do not currently resolve to an active website. This Panel also considers having dynamic parking pages with pay-per-click links to be an inactive use of the domain name. Respondent’s inactive holding of the domain names constitutes bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <the-messa.com> and <la-messa.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 3, 2018
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