MasterCraft Boat Company, LLC v. Debbie Hayes
Claim Number: FA1610001696484
Complainant is MasterCraft Boat Company, LLC (“Complainant”), represented by Tracy G. Edmundson of Egerton, McAfee, Armistead, & Davis, P.C., Tennessee, United States. Respondent is Debbie Hayes (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mastercraftaz.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2016; the Forum received payment on October 3, 2016.
On October 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mastercraftaz.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2016 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@mastercraftaz.com. Also on October 6, 2016, 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 October 31, 2016.
A timely Additional Submission was received from Complainant on November 7, 2016.
On November 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer of inboard boats for towed watersports and other recreational uses. Complainant has registered the MASTER CRAFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,427,389, registered Feb. 3, 1987), which demonstrates Complainant’s rights in its mark. The <mastercraftaz.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the geographic term “az.”
Respondent has no rights or legitimate interests in the domain name. Respondent was a principal, equity owner, officer, and/or employee of a corporation known as MasterCraft Boats of Arizona, Inc. (“MBA”), which was an Authorized Dealer of MasterCraft boats and related products under a series of Dealership Agreements between Complainant and that entity for several years. The 2010 Dealership Agreement specifies that the MASTER CRAFT mark is exclusively owned by Complainant, and that all use by Respondent would be for the benefit of Complainant. Pursuant to the 2010 Dealership Agreement, Respondent was to immediately discontinue all use of the MASTER CRAFT mark following the termination or expiration of the 2010 Dealership Agreement. By letter dated December 6, 2010, Respondent was notified that that Respondent’s entity was not being offered a new agreement with Complainant beyond the expiration of the term of the 2010 Dealership Agreement, which occurred effective June 30, 2010. Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website, which sells real estate associated with towed watersports activities.
Respondent registered and is using the domain name in bad faith. First, Respondent uses a confusingly similar domain name to operate a competing business. Second, Respondent’s continued registration renewal and use of the domain name following the cessation of its right to continue to use the mark pursuant to the 2010 Dealership Agreement is evidence of bad faith.
B. Respondent
Respondent has been a real estate broker in the state of Arizona since 1979 and has specialized in the sales of waterfront properties in Arizona since 1989. Respondent selected the domain name because it represents the quality, craftsmanship, and exceptionalism that is associated with a variety of products representing a “mastercraft” quality; some examples of other domain names using the term “mastercraft” include www.mastercrafttires.com and www.mastercraftsafety.com.
Respondent maintains rights and legitimate interests in the domain name. Respondent uses the domain name in connection with its real estate and personal service businesses, which it has been involved with since 1989.
Respondent did not register the domain name in bad faith. Respondent has owned the domain name for sixteen years and Complainant has never raised an issue of Respondent’s use of the domain name until now. For this reason, Respondent asserts the doctrine of laches defense. Further, Complainant is looking for a quick fix by attempting to hijack Respondent’s domain name after Respondent has been using the domain name for sixteen years.
C. Additional Submission by Complainant
All use of the mark by Respondent inured to the benefit of Complainant pursuant to the terms of their Dealership Agreements.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is a manufacturer of inboard boats for towed watersports and other recreational uses. Complainant has registered the MASTER CRAFT mark with the USPTO (e.g., Reg. No. 1,427,389, registered Feb. 3, 1987), which Complainant asserts demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (FORUM June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO; Complainant has met the requirements of Policy ¶ 4(a)(i).”). Thus, the Panel finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <mastercraftaz.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the geographic term “az”. Panels have agreed. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent was a principal, equity owner, officer, and/or employee of a corporation known as MasterCraft Boats of Arizona, Inc. (“MBA”), which was an Authorized Dealer of MasterCraft boats and related products under a series of Dealership Agreements between Complainant and that entity for several years. Complainant asserts that the 2010 Dealership Agreement specifies that the MASTER CRAFT mark is exclusively owned by Complainant, and that all use by Respondent would be for the benefit of Complainant. Pursuant to the 2010 Dealership Agreement, Complainant states that Respondent was to immediately discontinue all use of the MASTER CRAFT mark following the termination or expiration of the 2010 Dealership Agreement. By letter dated December 6, 2010, Complainant contends that Respondent was notified that that Respondent’s entity was not being offered a new agreement with Complainant beyond the expiration of the term of the 2010 Dealership Agreement, which occurred effective June 30, 2010. Further, the WHOIS information for the domain name merely lists “Debbie Hayes” as registrant. Panels have held, and this Panel agrees, that a respondent is not commonly known by a domain name where there is no evidence in the record showing that the respondent was commonly known by the domain name, including WHOIS information, and a complainant’s assertion that it did not provide the respondent with permission to use its mark in a domain name. See Reese v. Morgan, FA 917029 (FORUM Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant alleges that Respondent’s domain name resolves to a website, which sells real estate associated with towed watersports activities. Specifically, Complainant claims that the disputed domain name redirects to the landing page of arizonaluxurymarine.com, which bears a similar connection to the towed water sports boats, accessories, and services offered by Complainant under its MASTER CRAFT mark. Panels have held that a respondent’s use of a domain name to operate a business that is in competition with a complainant does not constitute 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 Alcon, Inc. v. ARanked, FA 1306493 (FORUM Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent uses a confusingly similar domain name to operate a competing business. Panels have decided that a respondent’s use of a domain name to operate a business that is competitive with a complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (FORUM Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel holds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent’s continued registration renewal and use of the domain name following the cessation of its right to continue to use the mark pursuant to the 2010 Dealership Agreement is evidence of bad faith. Panels have agreed with this concept. See Houlberg Dev. v. Adnet Int’l, FA 95698 (FORUM Oct. 27, 2000) (holding that as the respondent had actual knowledge of the complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name, the domain name was renewed in violation of ICANN Policy ¶ 2(b) and hence in bad faith). This Panel accepts Complainant’s argument, and finds that Respondent’s renewal registrations constitute further evidence of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mastercraftaz.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 23, 2016
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