Johnson Outdoors Marine Electronics, Inc. v. richard cosgrif
Claim Number: FA1806001793398
Complainant is Johnson Outdoors Marine Electronics, Inc. (“Complainant”), represented by Heather S. Stutz of Quarles & Brady LLP, Wisconsin, USA. Respondent is richard cosgrif (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minn-kota.com>, registered with FastDomain Inc..
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 June 22, 2018; the Forum received payment on June 22, 2018.
On June 26, 2018, FastDomain Inc. confirmed by e-mail to the Forum that the <minn-kota.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 July 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@minn-kota.com. Also on July 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2018, 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. 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, Johnson Outdoors Marine Electronics, Inc., is a leading provider of electronic fishing motors. Complainant uses the MINN KOTA mark to provide and market its products and services. Complainant claims rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,487,402, registered on May 10, 1988). Respondent’s <minn-kota.com> is confusingly similar as it contains Complainant’s MINN KOTA mark in its entirety, merely adds a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <minn-kota.com> domain name. Respondent is not permitted or licensed to use Complainant’s MINN KOTA mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <minn-kota.com> domain name to divert Internet users to Respondent’s website where Respondent attempts to pass off as Complainant in order to sell goods in direct competition with Complainant’s business.
Respondent has registered and used the <minn-kota.com> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Further, Respondent had actual knowledge or constructive notice of Complainant’s MINN KOTA mark prior to registering the <minn-kota.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on September 28, 2003.
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.”).
Complainant claims rights in the MINN KOTA mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the MINN KOTA mark (e.g., Reg. No. 1,487,402, registered on May 10, 1988). Therefore, the Panel finds that Complainant has rights in the MINN KOTA mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <minn-kota.com> domain name is confusingly similar to the MINN KOTA mark as Respondent incorporates the mark in its entirety and adds a hyphen. Addition of a hyphen to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore finds that Respondent’s <minn-kota.com> domain name is identical and/or confusingly similar to Complainant’s MINN KOTA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <minn-kota.com> as Respondent is not authorized to use Complainant’s MINN KOTA mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information of record identifies registrant as “richard cosgrif”. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
In addition, Complainant argues that Respondent uses the <minn-kota.com> domain name to pass off as Complainant and redirect users to Respondent’s website. Use of a disputed domain name to pass off as a complainant may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant argues that Respondent prominently displays Complainant’s mark on its webpage to offer goods that are identical to those of Complainant. The Panel finds that Respondent’s use of the <minn-kota.com> domain name to pass itself all as Complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶4(a)(ii).
Complainant argues that in Phillip Morris USA, Inc. v. Gemenitzi, D2009-1715 (WIPO Jan. 28, 2010), the Panel found bad faith use when the respondent used <marlboro4sale.net> to sell MARLBORO brand cigarettes and competing cigarette brands because the respondent was “attempting to divert customers from Complainant and thus disrupt Complainant’s business.” The Panel agrees with Complainant that Respondent is likewise using the Domain Name to divert Complainant’s customers from Complainant’s legitimate <minnkotamotors.com> website and thus disrupt Complainant’s business. Complainant argues, and Respondent does not attempt to refute, that Respondent attempts to pass itself off as Complainant by prominently displaying Complainant’s trademarks (including logos) in connection with the use of Complainant’s goods, thereby diverting consumers who believe that they are purchasing Complainant’s goods from a website operated by Complainant to a website operated by Respondent. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Further, Complainant argues that Respondent must have had actual knowledge of Complainant’s MINN KOTA mark. Complainant notes that Respondent registered the disputed domain name incorporating Complainant’s MINN KOTA mark in its entirely, and the resolving website prominently features the MINN KOTA mark. In addition, Respondent’s website focuses on providing customers with identical products. Consequently, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the MINN KOTA mark prior to registration, which constitutes bad faith registration per Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <minn-kota.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 10, 2018
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