Makita Corporation v. Donald K. King
Claim Number: FA2109001967051
Complainant is Makita Corporation (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Donald K. King (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <makita-outlet.fit>, registered with Dynadot, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2021; the Forum received payment on September 30, 2021.
On October 5, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <makita-outlet.fit> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2021 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@makita-outlet.fit. Also on October 5, 2021, 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 October 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following submissions.
Complainant, Makita Corporation, operates a power tool manufacturing company valued at over $12 billion. Complainant has rights in the MAKITA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,816,177, registered Feb. 24, 2004). See Compl. Ex. E. Respondent’s <makita-outlet.fit> domain name is identical or confusingly similar to Complainant’s MAKITA mark, only differing by the addition of a hyphen and the generic term “outlet” to the mark, along with adding the “.fit” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <makita-outlet.fit> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MAKITA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to pass itself off as Complainant to phish for Internet users’ personal and financial information.
Respondent registered and uses the <makita-outlet.fit> domain name in bad faith. Respondent attempts to pass itself off as Complainant to conduct a phishing scheme. Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the MAKITA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Japanese company that operates a prominent power tool business.
2. Complainant has established its trademark rights in the MAKITA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,816,177, registered Feb. 24, 2004).
3. Respondent registered the disputed domain name on August 16, 2021.
4. Respondent has used the disputed domain name to pass itself off as Complainant to phish for Internet users’ personal and financial information.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the MAKITA mark through its registration with the USPTO. Registration of a mark with a nation’s trademark agency, such as the USPTO, is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 2,816,177, registered Feb. 24, 2004). See Compl. Ex. E. Therefore, the Panel finds Complainant has rights in the MAKITA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MAKITA mark. Complainant argues that Respondent’s <makita-outlet.fit> domain name is identical or confusingly similar to Complainant’s MAKITA mark, merely adding a hyphen, the generic term “outlet” and the “.fit” gTLD. Such changes may not sufficiently distinguish a domain from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Thus, the Panel may find the disputed domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s MAKITA trademark and to use it in its domain name, adding the generic word “outlet” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on August 16, 2021;
(c) Respondent has used the disputed domain name to pass itself off as Complainant to phish for Internet users’ personal and financial information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <makita-outlet.fit> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MAKITA mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Donald K. King” as the registrant of the disputed domain name. See Compl. Exs. A and J. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <makita-outlet.fit> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant to conduct a phishing scheme. Previous Panels have held that such use of an infringing domain name does not qualify as either a bona fide offer or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant provides screenshots of the disputed domain name that shows Respondent making use of Complainant’s MAKITA mark and related products in order to pass itself off as Complainant, and offers Internet users the ability to add items to a cart and presumably type in payment and shipping information. See Compl. Ex. H. Therefore, the Panel finds Respondent lacks rights and interests in the disputed domain under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <makita-outlet.fit> domain name in bad faith because it attempts to pass itself off as Complainant in furtherance of a phishing scheme. Previous Panels have held that such use of a disputed domain name may demonstrate bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). As previously noted, Complainant provides screenshots of the disputed domain name as evidence of Respondent’s bad faith. See Compl. Ex. H. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant also contends that Respondent registered the <makita-outlet.fit> domain name with actual knowledge of Complainant’s rights in the MAKITA mark. Pursuant to Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to demonstrate bad faith and can be established by the notoriety of a mark and the use Respondent makes of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant operates a power tool manufacturing company operating factories around the world, and Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme. As the Panel agrees that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MAKITA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <makita-outlet.fit> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 28, 2021
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