Paxar Americas, Inc. v.
eNom, Inc.
Claim Number: FA0705000980114
PARTIES
Complainant is Paxar Americas, Inc. (“Complainant”), represented by Sharon
A. Ceresnie, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monarchmarking.com>, registered with
Enom,
Inc. (the "Registrar").
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Mr. Peter L.
Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the Uniform Domain Name Dispute
Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrppolicy24oct99.htm>, which was
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, and approved on October 24, 1999, and in accordance
with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(“Rules”) as approved on October 24, 1999, as supplemented by the National
Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy then in effect (“Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum
(the "Forum") electronically on May 8,
2007; the Forum received a hard copy of the Complaint, together with
Exhibits A‑F, on May 10, 2007.
On May 11, 2007, the Registrar
confirmed by e‑mail to the Forum that the <monarchmarking.com>
domain name is registered with Enom and
that Respondent is the current registrant of the name. The Registrar also verified that Respondent
is bound by the Enom registration
agreement and has thereby agreed to resolve domain‑name disputes brought
by third parties in accordance with the Policy.
On May 17, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 6, 2007 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@monarchmarking.com by e‑mail.
A timely Response was received and determined to be complete on June 6, 2007.
On June 8, 2007, pursuant to Complainant’s
request to have the dispute decided by a single‑member Panel, the
National Arbitration Forum appointed Mr. Peter L. Michaelson, Esq. as Panelist and set a deadline of June 22, 2007 to
receive the decision from the Panel.
Thereafter, Complainant filed an
additional submission, together with Exhibit A, with the Forum on June 12,
2007. However, the Forum found the
submission deficient under the provisions of Supplemental Rule 7 inasmuch as,
though the submission itself was timely filed, the filing fee for the
submission was received late.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identicality
Complainant contends that the disputed domain name is confusingly similar to the MONARCH Marks inasmuch as the name incorporates Complainant's mark MONARCH and is also identical to Complainant's mark MONARCH MARKING as the name (apart from its generic top level domain ".com") wholly consists of the latter mark.
Hence, Complainant concludes that it has met the requirements of paragraph 4(a)(1) of the Policy.
2. Rights and legitimate interests
Complainant contends, for various reasons, that Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
First, Complainant alleges that Respondent is not known by either the mark MONARCH or MONARCH MARKING and has not acquired any trademark or service mark rights
in either of these marks.
Second, Complainant has not
licensed or otherwise permitted Respondent to use any of the MONARCH Marks,
including use of these marks or a variant thereof in any domain name.
Lastly, Complainant alleges that Respondent's use of the MONARCH Marks in the
disputed domain name is not
"nominative" in the sense that such use is not an unavoidable use of
these marks to identify the goods or
services which Respondent offers on its website. Hence, it is not necessary for Respondent to
use the mark MONARCH MARKING in the
disputed domain name in order to provide its services.
3. Bad faith use and
registration
Complainant contends that, for
various reasons, Respondent has registered and is using the disputed domain
name in bad faith, hence in violation of paragraph 4(a)(iii)
of the Policy.
First, Complainant alleges that since Respondent registered and started
using the disputed domain name long after Complainant adopted, used and
registered its MONARCH Marks and inasmuch as Respondent's web site, to which
the disputed domain name resolves, offers goods competitive with those of
Complainant, Respondent must have known of those marks when it registered the
name. Thus, Respondent could not have
registered the name with any intent of legitimately using it. Hence, Respondent's actions evidence bad
faith registration.
Second,
Respondent's use of the name to address a web site, through which it offers
goods that directly compete with those of Complainant, and presumably receives
click‑through revenue there from, reflect bad faith use in violation of
paragraph 4(b)(iv) of the Policy. In that
regard, Respondent's use of the mark MONARCH and MONARCH MARKING is likely to confuse Internet users into thinking
that Respondent is some how affiliated with
Complainant, but when in fact no such
affiliation actually exists. This is
especially likely since Complainant
advertises and sells its goods on the Internet through its use of highly
similar domain names, i.e., including
<monarch‑marking.com> and <monarch.com>. Moreover, Respondent likely
profits through this confusion by receiving click‑through revenue from visitors to its web page.
B. Respondent
1. Confusing similarity/identicality
Respondent does not dispute that the disputed domain name is identical or confusingly similar to Complainant's MONARCH Marks.
2. Rights and legitimate interests
Respondent also does not dispute that it does not have any rights or legitimate interests in the disputed domain name.
3. Bad faith use and
registration
Respondent contends that, contrary to Complainant's view, it did not
act in bad faith.
Specifically, Respondent argues that when it, as the Registrar, assumed
ownership of the disputed domain name due to nonpayment of the registration fee
by the original registrant, it had no knowledge of Complainant's MONARCH
Marks. Moreover, Respondent has a policy
against holding domain names in derogation of legitimate rights holders. Hence, had Complainant so requested transfer
of the name, Respondent would have gladly complied by immediately transferring
the name, without cost, to Complainant.
However, Complainant did not contact Respondent, but filed the present
Complaint instead.
The Complaint, the instant it was filed, triggered paragraph 8(a) of
the Policy which forbade Respondent from transferring the name, hence locking
the name in Respondent's account while this action is pending and thus
substantially delaying its eventual transfer to Complainant.
Respondent was always fully prepared to respond to any pre‑suit
inquiry by Complainant, and, but for the present action, was fully willing to
immediately transfer the name, at no cost, to Complainant. Respondent would have done so had Complainant
accepted the transfer, but Complainant refused.
Consequently, Respondent believes that it always acted in good faith
toward Complainant. Moreover, Respondent
states:
There may be other registrars who
would not act so diligently in the face of an inquiry by Complainant.
Perhaps, in a misguided attempt to punish the domain 'industry,'
Complainant is maintaining this action for the purpose of obtaining a ruling
that Respondent acted in 'bad faith'. In
fact, if Respondent's actions constitute 'bad faith,' there would be no incentive
for the less diligent registrars to mend their ways.
C. Complainant's Additional
Submission
Though Complainant's Additional Submission was deficient due to late
payment of the filing fee, the Panel has nevertheless fully considered it. In good measure, this submission merely
reiterates and amplifies various allegations set forth in the Complaint. Hence, for the sake of brevity, the Panel
will just mention two pertinent points raised by Complainant.
First, though Respondent repeatedly states the fact that Complainant
did not contact Respondent prior to filing the Complaint, Complainant responds
by noting that there is no requirement under the Rules for Complainant to have
done so.
Second, Complainant provides, in Exhibit A to this submission, a hard‑copy
printout of the home page to which the disputed domain name resolves and a
lower‑level page which links to the home page, where both pages clearly
list various links that direct Internet users to third‑party sites that
offer goods which directly compete with Complainant's offerings, and through
which Respondent apparently receives click‑through revenue as a result of
such traffic. In spite of Respondent's
policy against maintaining infringing domain names, this user direction still
continues. Complainant states:
Respondent makes much of
the fact that it is a Registrar with a policy against maintaining infringing
domain names, pointing out that it offered to transfer the Infringing Domain
Name to Paxar after this complaint was filed.
Yet, even today, the Infringing Domain Name directs Internet users to
links and websites of Paxar's direct competitors. If Respondent had acted with the 'utmost good
faith,' as
it claims it did, when it acquired the Infringing Domain Name, it would have
ceased maintaining an active website at the Infringing Domain Name, and ceased
generating revenue that directly results from confusion between Respondent and Paxar.
FINDINGS
A copy of the WHOIS registration record for the disputed domain name appears in Exhibit A to the Complaint. As indicated, the domain name was registered on October 24, 2006.
A. Complainant’s MONARCH Marks
Complainant owns various
a) THE MONARCH MARKING MATE
last
renewed: July 26, 2003
filed: February 22, 1972
This mark is registered for use in connection with "catalogues
published periodically" in international class 16. The entry states that first
use and first use in commerce of the mark for these goods commenced as of July
14, 1971.
b) MONARCH
renewed:
February 7, 2005
filed: November 15, 1989
This mark is registered for use in connection with "maintenance and
repair services for marking machines, computerized printers, machines for
stacking of tags, machines for winding tag and label webs" in international
class 37. The entry
states that first use and first use in commerce of the mark for these services
commenced as of December 31, 1922.
c) MONARCH MARKING 1740
renewed:
September 30, 2006
filed: April 22, 1986
This mark is registered for use in connection with "marking
machines" in international class 7.
The entry states that first use and first use in
commerce of the mark for these goods commenced as of February 10, 1983.
d) MONARCH
renewed:
October 13, 2005
filed: August 26, 1991
This mark is registered for use in connection with "battery charging equipment" in international class 9. The entry states that first use and first use in commerce of the mark for these goods commenced as of August 2, 1987.
e) MONARCH
renewed:
August 18, 2006
filed: April 12, 1995
This mark is registered for use in connection with "plastic fasteners for attaching articles, namely tags to merchandise" in international class 20. The entry states that first use and first use in commerce of the mark for these goods commenced as of December 31, 1993.
f) MONARCH
filed: November 25, 1996
This mark is registered for use in connection with: "maintenance
and repair services for equipment used in item identification, item tracking,
price marking, and the generation, encoding, scanning and electronic
communication of data, including by radio frequency and telephone lines"
in international class 37; "providing training in the generation,
encoding, scanning and electronic communication of data" in international
class 41; and "providing technical support and assistance services in the
fields of item identification, item tracking, price marking, and the
generation, encoding, scanning and electronic communication of data, including
by radio frequency and telephone lines; design and programming of software for
others for the generation, encoding, scanning and electronic communication of
data" in international class 42.
The entry states that first use and first use in commerce of the mark
for the services in international classes 37, 41 and 42 commenced as of
December 31, 1922; December 31, 1972 and December 31, 1922, respectively.
g) MONARCH
filed: August 13, 1999
This mark is registered for use in connection with "label scrapers" in international class 8. The entry states that first use and first use in commerce of the mark for these goods commenced as of December 31, 1984.
B. Complainant and its
activities
Complainant and its predecessor in interest,
Monarch Marking Systems, Inc., has been
marketing and selling goods and services in the labeling industry and under the
MONARCH Marks since at least as early
as the 1920's. These goods and services
primarily relate to item tracking and
labeling, and include marking
machines, tickets, tags, labels, battery chargers and catalogues about the labeling industry; and
maintenance and repair services for marking machines, printers, price markers, plastic fasteners and
label scrapers. Complainant has sold
these goods and services on‑line since as early as 1998. Further, Complainant also owns a number of
domain names that incorporate its MONARCH Marks, including
<monarchmarking.com> and <monarch.com>, and has hosted active web
sites (hard‑copy printouts of some of the pages of those sites appear in
Exhibit D to the Complaint) at some of those names since early 1998.
Complainant has invested
a considerable amount of money advertising and promoting its MONARCH Marks and has sold well over a billion dollars of
goods and services under those marks.
C. Respondent and its
activities
Respondent is a domain name registrar and one through which the disputed
domain name was registered. When the
original registrant of the name defaulted on payment, Respondent assumed
complete ownership of the name.
Respondent has a policy against holding domain
names in derogation of the legitimate rights of trademark owners.
The disputed domain name, as currently used by Respondent, resolves to a
holding page which provides links to web sites of various competitors of Complainant
in the labeling field, and through which sites goods are being offered which
directly compete with those currently produced by Complainant. A hard‑copy printout of the home page
and a lower‑level page, both from that site, appears in Exhibit F to the
Complaint.
D. Interactions between the
parties
Complainant did not contact Respondent prior to filing the present
action. Had it done so, Respondent would
have gladly transferred the disputed domain name, at no cost, to
Complainant. However, when the action
was filed, Respondent, in accordance with paragraph 8(a) of the Policy, locked
the disputed domain name which precluded its transfer to Complainant while this
proceeding was pending.
Immediately
upon receiving the Complaint, a representative of Respondent telephoned counsel
for Complainant and explained the situation, apologized for the inconvenience and offered to transfer the disputed domain
name to Complainant. Complainant refused
to accept the transfer.
Subsequently, on May 31,
2007, counsel for Respondent telephoned counsel for Complainant.
Respondent's counsel explained the situation, and again offered to
transfer the disputed name to
Complainant. Complainant's counsel again
refused to accept transfer of the name, unless Respondent met certain
conditions which included
reimbursement of all of Complainant's fees and costs associated with bringing
the present action. Respondent's counsel refused those conditions
but again offered to immediately
transfer the name. Complainant's counsel
once again rejected that offer.
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 Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(i) the domain name
registered by Respondent is identical or confusingly similar to a trademark or
service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests
in respect of the domain name; and
(iii) the domain name has
been registered and is being used in bad faith.
Identical and/or Confusingly Similar; Rights or Legitimate Interests
Inasmuch as Respondent did not dispute
Complainant's allegations for either of these two factors, the Panel, without
further comment and hence to simplify this decision, simply accepts those
allegations and, as a result, finds that:
(a) the disputed domain name is identical/confusingly similar to
Complainant's MONARCH Marks, and
(b)
Respondent has no rights or legitimate interests in the disputed domain
name.
Thus, Complainant has met its burden under
paragraphs 4(a)(i) and 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
Contrary to Respondent's claims, the Panel finds that Respondent’s actions constitute bad faith registration and use of the disputed domain name.
Though Respondent would like the Panel to
assess, from its submissions, whether its conduct amounted to bad faith solely
from the perspective of its repeated offers to transfer the name, at no cost,
to Complainant, those actions are not the only guidepost here by any
means. This is not the conduct which
provoked Complainant into filing its Complaint.
Rather, that conduct ‑‑ which Complainant emphatically and
clearly states both in its Complainant and Additional Submission but which
Respondent completely ignores in its Response ‑‑ is Respondent's
use of name, which contains Complainant's mark MONARCH, as an instrumentality
to point Internet users to a web site that itself provides links to products
directly competitive with Complainant's offerings. This, in turn, causes confusion of Internet
users from which Respondent benefits ‑‑ apparently through click‑through
revenue, while Complainant suffers by incurring injury to its marks and
reputation.
As a threshold matter, the question arises as
to whether, under the Policy, registrars in general can be respondents and more
specifically whether here Registrar Enom is a proper respondent. Though the Policy, Rules and Supplemental
Rules make no specific mention of encompassing registrars within their reach,
one need only look at the registrar's conduct in any given situation.
Specifically, to begin, Supplemental Rule
1(b) defines a "Holder of a Domain Name Registration" as "the
single person or entity listed in the WHOIS registration information at the
time of the filing of the Complaint with the Forum; and once the registrar has
verified registration, is limited to the single person or entity as verified by
the registrar". This is the
respondent against whom a complaint is filed by a complainant, the latter being
defined in Supplemental Rule 1(d) as "the single person or entity claiming
to have rights in the domain name, or multiple persons or entities who have a
sufficient nexus who can each claim to have rights to all domain names listed
in the Complaint." Consequently,
under Supplemental Rule 1(d), a respondent is the entity identified in the WHOIS
registration information as the registrant of the name in question and is then
so verified by the registrar.
If a registrar were solely acting as an agent
of a third‑party registrant in registering a domain name, then the
registrar would not be the registrant of that name and hence would not a
"Holder of a Domain Name Registration" and thus could not under
Supplemental Rule 1(b) be a respondent in a UDRP action. Hence, an ICANN administrative panel would
have no jurisdiction over alleged improprieties associated merely with its acts
in registering names for others.
However, where the registrar's conduct with
respect to a domain name expands beyond performing mere administerial duties in
accepting and implementing name registration for another into registration and
use by itself, then its role changes from that of a mere registrar to that of
an owner‑user. Such a change,
which in fact occurred here, exposes the registrar to the full force and effect
of the Policy by virtue of the registrar having then become a "Holder of a
Domain Name Registration" and then verified as such. Here, Registrar Enom satisfies both prongs of
Supplemental Rule 1(b) and thus is a proper respondent. See Solutia, Inc. v. Sur
Hosting c/o Rafael Abarca, NAF Case No. FA 716391 (August
30, 2006) (finding that Sur Hosting is a proper respondent under Supplemental
Rule 1(d)).
In such instances where a registrar becomes
an owner‑user, no deference whatsoever is attributed to a registrar's
coordinate role as being the actual registrar of the disputed name itself. The registrar faces the exact same scrutiny
and liability under the Policy for its conduct as would any domain name
registrant. If this were not the case,
then domain name registrars could, with impunity under the Policy, register and
use domain names in a manner that inflicts harm on legitimate rights
holders. Such a result would lie
directly contrary to the very goals of the Policy ‑‑ recognition
and preference to the legitimate rights of trademark holders as against abusive
domain name registration.
Even in situations, as here, where a
registrar has laudably made and implemented policies and practices ostensibly,
at least in theory, to protect the legitimate rights of those holders by
returning, on demand and at no cost, to those holders names that infringe their
rights, those policies and practices could be unilaterally ignored by the
registrar whenever it desires, thus, in practice, frustrating their intent and
rendering both a complete nullity to the ultimate detriment of those rights
holders. Such a result would simply be indefensible
and intolerable.
Respondent Enom argues that once the
Complaint was filed, it was precluded from taking any action to transfer the
disputed domain name to Complainant.
While, under paragraph 8(a) of the Policy, this was indeed true,
what existed to prevent it from taking suitable action to protect the rights of
Complainant prior to that filing? As the
record is completely silent on this point, the Panel infers that the answer is
nothing. Specifically and
illustratively, what prevented Respondent from immediately terminating the use
of the name, once the initial registrant defaulted or shortly thereafter but in
either case before the Complaint was filed, as an operative address to a web
site through which ultimately products were offered that were competitive with
those of Complainant, thus preventing any further user confusion and user
direction to third‑party sites?
Again, the record is silent.
Alternatively, what prevented Respondent, once the initial registrant
defaulted, from simply canceling the registration and casting the disputed name
back into the public domain rather than using it at all, let alone as it
actually did? Here too, the record is
silent. Again, the answer must be
inferred as being nothing.
Thus, it stands to reason that Respondent
Enom could have chosen not to exploit the name, but here, in furtherance of its
own benefit whether pecuniary or otherwise, it did not do so and since it did
not then it must fully accept all the risks associated with what it actually
did ‑‑ one of those risks being exposure to the Policy. Therefore, Respondent Enom's actions, in
using the name as it did to both cause user confusion and exploit that
confusion for its own benefit, were both intentional and continuing, clearly
evidencing bad faith under paragraph 4(b)(iv) of the Policy.
A nearly identical situation to the present
dispute arose relatively recently in Nicholas
V. Perricone, M.D. and N.V. Perricone LLC v. Compana LLC, NAF Case No. FA
825260 (December 16, 2006). There,
respondent registrar, which had absolutely no relationship with complainant or
authorization there from to use any of the latter's federally registered
Perricone‑based marks, nevertheless registered the domain name
<perricone.com> . Respondent registrar then used the name to
resolve to a web page, which it also established, that contained sponsored
links to third‑party web sites which, in turn, offered products directly
competitive with skin‑care products then offered by complainant. Respondent received click‑through
revenue through user clicks on those links.
In spite of respondent's allegations that it registered the name in good
faith because it believed that the name is a common name for a vanity email
service, the panel in finding bad faith use and registration stated, in
pertinent part:
Respondent has used the disputed domain name
to resolve to a website that displays numerous text‑based links to skin
care products. The Panel infers from the
nature of the resulting website that Respondent is receiving commercial gain as
a result of the visitors that click on the text‑based links. Additionally, the Panel finds a likelihood
that visitors will believe Complainant to be affiliated with, or in sponsorship
of, the resulting website because the resulting website displays content
regarding skin care products, the same line of business in which Complainant is
involved.
Consequently, the panel transferred the
domain name to complainant. This Panel,
in full accord with the Perricone
decision, will do the same here.
Hence, the Panel views Respondent Enom's actions, with respect to the disputed domain name, as constituting bad faith registration and use in violation of general paragraph 4(a)(iii) of the Policy and moreover paragraph 4(b)(iv) thereof.
Accordingly, the Panel concludes that Complainant has provided sufficient proof of its allegations to establish a prima facie case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Hopefully, not only this Registrar, but
others, which move beyond mere domain name registration and into name
exploitation and, in so doing, increasingly assume the role of name owner‑users,
will wisely heed the dictates of this decision and thus avoid the cost,
scrutiny and other potentially adverse consequences associated with defending
their actions in administrative or other legal proceedings.
DECISION
In accordance with paragraph 4(i) of the Policy and paragraph 15 of the
Rules, the relief sought by Complainant is hereby GRANTED.
Accordingly, the Panel orders that the
disputed domain name, <monarchmarking.com>,
is to be TRANSFERRED from Respondent to Complainant.
Peter L. Michaelson, Esq., Panelist
Dated: June 22, 2007
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