Mohawk Canoe Club, Inc. v. Mohawk
Computer Company, Inc. c/o George Fluck
Claim Number: FA0411000371790
PARTIES
Complainant
is Mohawk Canoe Club, Inc (“Complainant”),
represented by Robert V. Fodera, of Fox and Fox LLP, 70
South Orange Avenue, Livingston, NJ 07039.
Respondent is Mohawk Computer
Company, Inc. c/o George Fluck (“Respondent”), 229
Sharon Road, Robbinsville, NJ 08691.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mohawkcc.biz>, <mohawkcci.com>, <mohawk.cc> and <mccshare.com>, registered with Network Solutions Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
29, 2004; the National Arbitration Forum also received a hard copy of the
Complaint on November 29, 2004.
On
December 1, 2004, Network Solutions Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <mohawkcc.biz>, <mohawkcci.com>, <mohawk.cc>
and <mccshare.com> are registered with Network Solutions Inc. and
that the Respondent is the current registrant of the names. Network Solutions Inc. has verified that
Respondent is bound by the Network Solutions Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
December 8, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 28, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@mohawkcc.biz, postmaster@mohawkcci.com,
postmaster@mohawk.cc and postmaster@mccshare.com by e-mail.
A
timely Response was received and determined to be complete on December 27, 2004.
On January 4, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
--On
June 15, 2004, Complainant was the prevailing party in a domain name dispute
regarding the <mohawkcc.com> domain name registered with Network
Solutions, Inc. The decision rendered
by the National Arbitration Forum in the case Mohawk Canoe Club, Inc. v.
Universal Computing Servs., FA 267477 (Nat. Arb. Forum June 15, 2004),
ordered the <mohawkcc.com> domain name transferred to Complainant
(Complaint Exhibit A).
Respondent,
Mohawk Computer Company, Inc. and George Fluck, have once again converted and
misappropriated Internet domain names owned by Complainant.
In
or about July 2000, Complainant began to use the website at <mohawkcc.com> for the sale of Club
merchandise (items including, but not limited to hats and t-shirts bearing the
Club logo) (Complaint Exhibit A).
At
the annual elections for officers in November, 2001, Respondent lost his bid to
be elected Vice-Commodore in Complainant’s organization.
Soon
after Complainant won the decision against the Respondent in Mohawk Canoe
Club, supra, Respondent began to use and operate the <mohawkcc.biz>,
<mohawkcci.com>, <mohawk.cc> and <mccshare.com>
domain names (collectively “<mohawkcc.biz>”) for his own
purposes. By his actions, Respondent
has once again misappropriated Complainant’s name and its website.
--It has
become painfully obvious that Respondent’s motivation in registering the <mohawkcc.biz>
domain names is to harass and antagonize Complainant and its members and force
them to spend money unnecessarily to defend their rights.
--Respondent
has registered and used the disputed domain names in bad faith. Respondent has registered the <mohawkcc.biz>
domain names to:
1. prevent the Mohawk Canoe Club, Inc., the
owner of the mark, from reflecting the mark in a corresponding domain name;
2. disrupt the operations of the Mohawk Canoe
Club, Inc.; and
3. the domain name has been registered and is
being used in bad faith.
--The
panel in the Mohawk Canoe Club case, supra, clearly concluded
that Complainant established with extrinsic proof that it has common law rights
in the MOHAWK CANOE CLUB and MOHAWK CC marks.
Complainant has enjoyed long and continued use of the marks and showed
that others identify with the Club sufficiently to establish that Complainant
has rights in the marks under the common law.
See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10,
2000; see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO
Mar. 28, 2001).
--The
evidence shows that Respondent is not commonly known by the domain names. The
Respondent has never made any showing of rights to or any legitimate interests
in the disputed domain names.
--Moreover,
Respondent’s diversionary use of the <mohawkcc.com> domain names
does not constitute a bona fide offering of goods or services pursuant to the
Policy and it is not a legitimate noncommercial or fair use pursuant to the
Policy.
--Respondent
has acted in bad faith. Respondent
continues to mislead the public by misappropriating the <mohawkcc.biz>
domain names. Respondent is knowingly
misleading Internet users by using Complainant’s mark for Respondent’s own
purposes. Such use misleads Internet
users into thinking that opinions given have the sponsorship of Complainant, an
organization that has existed for more than a century.
B.
Respondent
--Respondent
is incorporated in the State of New Jersey and provides global computer and
networking services.
--Complainant
is a “not for profit” canoe club.
--Respondent
currently uses the disputed domain names, <mohawk.cc>, <mohawkcci.com>,
<mohawkcc.biz> and <mccshare.com>, to support its
business and clients.
--Respondent
does not believe it is in conflict with Complainant. Respondent does not provide information that would confuse a
computer and networking company and its customers with Complainant, a not for
profit canoe club.
--Complainant
has a vendetta against Respondent because of the way Respondent once voted when
in Complainant’s organization.
--The
three-character name “mcc” is a very common abbreviation and used in many
domain names. As of December 14, 2004,
there were 12, 912 domain names that start with the letters “mcc.”
--The
abbreviation “cci” is common and can be found in over 5,000 domain names
(Response Exhibit A4).
--The
abbreviation “cc” can be found as an anchor in over 27,000 domain names.
--Complainant
should not be able to use the generic top-level domain “.biz” because it is for
business use. Complainant should not be
allowed to use the top-level domain “.net” because that should be for
businesses related to networking.
--Complainant’s
position that it owns domain names that start with the letters “mcc” or
“Mohawk” represents an excessive reach and an attempt to hijack domain names
owned by the Respondent and may possibly have a chilling impact on the business
community in using the Internet for free commerce.
FINDINGS
Complainant, the Mohawk Canoe Club, Inc.,
is an organization located in Trenton, New Jersey that is over a century old.
While not a business in the ordinary sense, Complainant does use its name to
sell some merchandise and services connected with canoeing.
Respondent claims to run a business
called the Mohawk Computer Company but there is no evidence that the Respondent
is anything other than the individual George Fluck. There also is no evidence of the many clients Respondent claims to
service using the name Mohawk Computer Company.
The four disputed domain names were
registered on the following dates: <mohawkcc.biz> on February 1,
2004; <mohawkcci.com> on July 22, 2004; <mohawk.cc>
on August 25, 2004; and <mccshare.com> on July 7, 2004.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 does not have a registered
trademark for the MOHAWK or MOHAWK CANOE CLUB marks . However, Complainant has demonstrated that for many years it has
been using its name to sell items and services connected with the Mohawk Canoe
Club. Complainant’s services include training people to paddle a canoe
(Complaint Exhibit A). In the Panel’s
view, this does give Complainant common law trademark rights in the New Jersey,
Pennsylvania and New York area where the Complainant sells its goods and
services. Common law trademark rights
are often recognized in Policy decisions, and in the June 15, 2004 Mohawk
Canoe Club decision, supra, which involved the same parties and
almost identical facts as here, the panel found that Complainant had
established common law trademark rights in the name MOHAWK CANOE CLUB. See Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that a store that rented tuxedos
had developed common law trademark rights in its name through 43 years of trade
in North Bergen, New Jersey).
Three of the disputed domain names
prominently feature Complainant’s MOHAWK trademark, i.e., the distinctive part
of Complainant’s MOHAWK CANOE CLUB mark.
These are: <mohawkcc.biz>, <mohawkcci.com>,
and <mohawk.cc>. Both <mohawkcc.biz>
and <mohawkcci.com> are confusingly similar to Complainant’s
MOHAWK trademark because their predominant component is the term “mohawk,” and
because the letters “cc” suggest the rest of Complainant’s name, viz., Canoe
Club.
The disputed domain name <mohawk.cc>,
on the other hand, is identical to the Complainant’s MOHAWK trademark. The Panel thus finds that Complainant has
carried its burden of proof to show that the three disputed domain names, <mohawkcc.biz>,
<mohawkcci.com> and <mohawk.cc> are identical or
confusingly similar to a trademark, MOHAWK, in which the Complainant has
rights.
As to the fourth disputed domain name, <mccshare.com>,
the Panel does not find it is identical or confusingly similar to Complainant’s
MOHAWK or MOHAWK CANOE CLUB common law trademarks. While it is true that connecting the first three letters of the
Complainant’s name would yield “mcc,” Complainant has not shown that it is
known as “mcc.” Even if it were, the
next word “share” seems to have nothing to do with Complainant. In sum, the Panel believes the chances are
remote that the public would find that the disputed domain name, <mccshare.com>,
has anything to do with Complainant.
The Panel finds Complainant has failed to
carry its burden of proof under paragraph 4(a)(i) of the Policy with respect to
the <mccshare.com> domain name.
Since Complainant is required to prove all three paragraphs of the
Policy at 4(a)(i-iii) with respect to each disputed domain name, the Panel does
not need to refer to the <mccshare.com> domain name for the
remainder of this discussion.
Complainant asserts Respondent is not
known by the disputed domain names and that Respondent’s only purpose in
registering them was to pursue a vendetta against Complainant. Respondent admits that it was in the recent
past a member of Complainant’s organization and that there was some kind of a
dispute.
Respondent claims it is using the disputed
domain names to conduct a computer consulting business. If true and done in good faith before notice
of this dispute, Respondent would be entitled to use the disputed domain names
because it would have shown rights and legitimate interests under Policy
paragraph 4(c)(i).
However, Respondent has merely narrated a
story about a computer business it says it is running. There is no proof at all that this business
exists in the real world and is known as Mohawk Computer Company, still less
that it existed prior to this dispute.
It looks as though Respondent made up this story for the purpose of this
proceeding.
The Panel thus finds that Complainant has
carried its burden of proof under paragraph 4(a)(ii) of the Policy to show
Respondent has no rights or legitimate interests in the <mohawkcc.biz>,
<mohawkcci.com> and <mohawk.cc> domain names.
Complainant contends that Respondent
registered the disputed domain names because Respondent is a former,
disgruntled member of Complainant’s organization seeking revenge. In this regard, the Panel notes that
Respondent registered a number of names quite close to Complainant’s MOHAWK
CANOE CLUB trademark. The Panel
believes Respondent’s intention is both to deprive Complainant of the
possibility of using the disputed domain names and, if possible, to disrupt
Complainant’s activities. In general,
Respondent wants to be a thorn in the side of Complainant. In the Panel’s view, Respondent’s conduct
violates the bad faith provisions of two separate paragraphs of the Policy.
First, Respondent has violated paragraph
4(b)(ii) because it registered names it hoped Complainant would notice and want
because they meshed with Complainant’s MOHAWK CANOE CLUB trademark. The need for a pattern of conduct is
satisfied because Respondent registered three names that were identical or
confusingly similar plus a fourth name in the previous National Arbitration
Forum Mohawk Canoe Club decision, supra, Respondent lost to
Complainant in June 2004.
Second, Respondent intended to disrupt
Complainant’s activities by attempting to draw attention from Complainant to
Respondent. Respondent wanted to make
it difficult for Complainant’s members or other interested parties to contact
or find Complainant on the Internet.
This violates the Policy bad faith provisions at paragraph
4(b)(iii). Even though Respondent
claims to be using the disputed domain names to sell computer services,
Respondent is using a Mohawk canoe as a logo, and Respondent claims to be active
in other canoeing organizations. The
Panel believes Respondent is a competitor of Complainant because Respondent
wants to weaken Complainant in favor of other, similar canoeing organizations
where Respondent still is persona grata. This comports with the definition of competitor prevailing in
Policy decisions as “one who acts in opposition to another.” See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000); see also Toronto Dominion Bank v.
Karpacher, D2000-1571, (WIPO Jan. 15, 2001).
The Panel finds Complainant has carried its burden of proof
to show Respondent registered and is using the disputed domain names in bad
faith.
DECISION
Having
established all three elements required under the ICANN Policy with respect to
the <mohawkcc.biz>, <mohawkcci.com> and <mohawk.cc>
domain names, the Panel concludes that relief shall be GRANTED in part.
Accordingly, it is Ordered that the <mohawkcc.biz>,
<mohawkcci.com>, and <mohawk.cc> domain names be TRANSFERRED
from Respondent to Complainant.
As to the <mccshare.com>
domain name, the Complaint is DENIED.
Dennis A. Foster, Panelist
Dated: January 18, 2005
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