Masonite International Corporation and Masonite Corporation v. Domain Hostmaster / Protopixel Pty Ltd
Claim Number: FA1610001698588
Complainant is Masonite International Corporation and Masonite Corporation (“Complainant”), represented by Joseph W. Berenato, III of Berenato & White, LLC, Maryland, USA. Respondent is Domain Hostmaster / Protopixel Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <masonitecorporation.com>, registered with Fabulous.com Pty Ltd.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On October 18, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <masonitecorporation.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@masonitecorporation.com. Also on October 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered its MASONITE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 248,040, registered Oct. 16, 1928), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. A. Respondent’s <masonitecorporation.com> domain name is confusingly similar to Complainant’s MASONITE mark, because it merely adds “corporation” and a generic top-level domain (“gTLD”) to the entire MASONITE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its MASONITE mark, and Respondent is not commonly known as any variation of MASONITE or <masonitecorporation.com>. Respondent is using the domain name to get referral fees from diverting internet traffic to unrelated third-party hyperlinks. See Compl., at Attached Ex. K. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and has been using the disputed domain name in bad faith. Respondent presumably receives revenue for referring mistaken Internet users to third-party websites, and is commercially gaining by the confusion as to the source, sponsorship, affiliation, or endorsement of the resolving page of the disputed domain name. Further, Respondent had actual notice of the world famous MASONITE mark, and is attempting to sell the <masonitecorporation.com> domain name for an amount that exceeds its out-of-pocket costs. Additionally, Respondent has had numerous UDRP decisions held against it, which is evidence of a pattern of bad faith. See Compl., at Attached Ex. P.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <masonitecorporation.com> domain name on October 29, 2004.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “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.”
The Panel finds that Complainant has asserted sufficient evidence to support the conclusion that the two Complainants should be treated as a single entity for purposes of this dispute.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately plead it rights and interests in and to the registered trademark. Respondent arrives at the disputed domain name by merely adding the generic word “corporation” and the gTLD “.com” to Complainant’s trademark, MASONITE. This is insufficient to distinguish the disputed domain name from the registered trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name and it is not licensed or authorized to use the disputed domain name.
Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent is apparently using <masonitecorporation.com> to redirect Internet users to third-party hyperlinks from which Respondent receives pay-per-click revenue. Complainant’s screen shots of Respondent’s domain name apparently show that Respondent advertises and offers unrelated pay-per-click hyperlinks. See Compl., at Attached Ex. K. Panels have consistently held that a respondent does not have rights or legitimate interests in a confusingly similar domain name where they host unrelated and generic links. See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (FORUM Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)).
Accordingly, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and, as such, Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently has made a general offer to sell the domain name to the public for an amount that exceeds its out of pocket costs. Respondent apparently is offering the disputed domain name for $559.30. See Compl., at Attached Ex. K. Further, the WHOIS information states “masonitecorporation.com is FOR SALE for US$559.30. Please visit www.fabdom.com/masonitecorporation.com now to purchase this domain name.” See Compl., at Attached Ex. J.
The Panel finds that Respondent’s offer to sell <masonitecorporation.com> for $559.30 constitutes bad faith use and registration under Policy ¶ 4(b)(i).
Further, Respondent apparently has had numerous UDRP proceedings decided against it and, as such, Respondent’s behavior establishes a pattern of bad faith under Policy ¶ 4(b)(ii). Complainant has provided evidence of several UDRP decisions where it contends that Respondent has been ordered to transfer a domain name for committing bad faith. See Compl., at Attached Ex. P (listing six UDRP cases dating back to 2003). Panels have held that multiple UDRP decisions against a Respondent can be show a pattern bad faith. See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (FORUM Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). As such, the Panel finds that Respondent has engaged in a pattern of bad faith domain name use and registration under Policy ¶ 4(b)(ii).
Respondent is also apparently commercially gaining in bad faith from confusion of the source, sponsorship, affiliation, or endorsement of <masonitecorporation.com>. Complainant presumes that Respondent is commercially gaining from referral-fees for the traffic on its advertised hyperlinks of the resolving page of the confusingly similar domain name. Respondent’s website is diverting away Complainant’s customers to unrelated hyperlinks. See Compl., at Attached Ex. K. Panels have held that hosting pay-per-click hyperlinks can demonstrate an attempt to commercially gain in violation of Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (FORUM June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). As such, the Panel finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of its rights in the MASONITE mark when it registered the <masonitecorporation.com> disputed domain name. Complainant claims that its MASONITE mark has achieved substantial fame, and that it has been in continuous use for 90 years in over 109 countries. See Compl., at Attached Exs. A, D, G, H, and M. Given the totality of the circumstances, it is unbelievable that Respondent was ignorant of Complainant’s claims in and to the trademark when it registered the disputed domain name. As such, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the MASONITE mark when it registered the <masonitecorporation.com> domain name and, therefore, finds that Respondent engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <masonitecorporation.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 14, 2016
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