Motor City Electric Co. v. Timo Petr
Claim Number: FA2011001920063
Complainant is Motor City Electric Co. (“Complainant”), represented by Keith Wright, Michigan, USA. Respondent is Timo Petr (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mceco.net>, registered with NameSilo, 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 November 9, 2020; the Forum received payment on November 9, 2020.
On November 10, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <mceco.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2020 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@mceco.net. Also on November 11, 2020, 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 December 7, 2020, David A. Einhorn, 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, Motor City Electric Co., operates a full-service electrical contracting business in the Midwest. Complainant has rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. MOTOR CITY ELECTRIC – Reg. 3,016,963, registered Nov. 22, 2005; MOTOR CITY ELECTRIC CO. – Reg. 3,016,964, registered Nov. 22, 2005). Complainant has also done business as MCE and MCECO since 1969. Respondent’s <mceco.net> domain name is confusingly similar to Complainant’s MOTOR CITY ELECTRIC mark, merely creating an acronym, MCE, out of the mark and adding the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mceco.net> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the MOTOR CITY ELECTRIC or MOTOR CITY ELECTRIC CO. marks. Additionally, Respondent does not use the disputed domain name for a bona fide offer of goods or services, or for any legitimate noncommercial or free use. Instead, Respondent uses an email address associated with the disputed domain name to conduct a phishing scheme to defraud and deceive Complainant and its customers.
Respondent registered and uses the <mceco.net> domain name in bad faith. Respondent attempts to confuse consumers by impersonating Complainant’s employee and attempting to confuse internet users into thinking Respondent is affiliated with Complainant.
B. Respondent
Respondent failed to submit a response to this proceeding. The Panel notes that the disputed domain name was registered on October 26, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks through registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Here, Complainant provides evidence of its registration of its marks with the USPTO (e.g. MOTOR CITY ELECTRIC – Reg. 3,016,963, registered Nov. 22, 2005; MOTOR CITY ELECTRIC CO. – Reg. 3,016,964, registered Nov. 22, 2005). Therefore, the Panel finds that the Complainant has rights in the MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mceco.net> domain name is identical and confusingly similar to Complainant’s MOTOR CITY ELECTRIC and MOTOR CITY ELECTRIC CO. marks, creating an acronym, MCE, out of the marks and adding the “.net” gTLD. Complainant represents that it has operated under the names MCE and MCECO since 1969. Forming an acronym and adding a gTLD has historically been insufficient to pass the confusing similarity analysis under Policy ¶ 4(a)(i). See National Automotive Experts, L.L.C. v. Domain Administrator / Vertical Axis Inc., FA 1603505 (Forum Mar. 17, 2015) (“While the Panel acknowledges that Complainant and others may refer to Complainant as NAE, it notes that the USPTO has not yet declared that Complainant has the right to monopolize the three letters NAE. Thus, the Panel declines to find that Complainant has trademark rights in the acronym NAE.”). Here, the Complainant alleges that it has done business under that acronym since 1969, and has used the domain name <mceco.com> to conduct business online. However, Complainant does not provide evidence, or even allege, that it has acquired common law rights to the MEC acronym as a trademark.
To the extent that Complainant is claiming rights in a trade name, trade name usage alone is insufficient to satisfy Policy ¶ 4(a)(i). See National Safe Haven Alliance v. Bob Floyd, FA1458705 (Forum Oct. 1, 2012) and see No Greater Joy Ministries v. Name Administration, Inc., FA326235 (Forum Nov. 8, 2004).
Thus, Complainant has not satisfied Policy ¶ 4(a)(i).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established the first of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mceco.net> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: December 21, 2020
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