DECISION

 

Terex Corporation v. Reserved for Customers / MustNeed.com

Claim Number: FA2406002103360

PARTIES

Complainant is Terex Corporation ("Complainant"), represented by Robyn S. Lederman of Brooks Kushman P.C., Michigan, USA. Respondent is Reserved for Customers / MustNeed.com ("Respondent"), Taiwan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <franna.com>, registered with Moniker Online Services LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 24, 2024; Forum received payment on June 24, 2024.

 

On June 26, 2024, Moniker Online Services LLC confirmed by e-mail to Forum that the <franna.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2024 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@franna.com. Also on June 28, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On July19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.

 

On July 19, 2024, the Panel issued an Order For Additional Submissions to correct one of Complainant's Exhibits and, on July 24, 2024, an Additional Submission was received from Complainant.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a global manufacturer of lifting and materials handling equipment commonly used in a broad array of industries including construction, shipping, energy, military, and mining. For over 40 years, Franna Products, a subsidiary of Complainant, has been the market leader in the design and manufacture of quality pick and carry cranes under the well-known and highly distinctive trademark FRANNA. This is the subject of a numerous trademark registrations in Australia (Reg. No. 367399 dated October 28, 1981), Malaysia (Reg. No. 97012439 dated September 2, 1997), The United Kingdom (Reg. No. UK00002142449 dated August 15, 1997), and others. Since at least as early as 1995, Complainant has operated a website which promotes the FRANNA mark.

 

The <franna.com> domain name, created on September 23, 2002, is identical or confusingly similar to the FRANNA mark.

 

Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the word "Franna" and it resolves the domain name to a pay-per-click website.

 

Respondent registered and uses the disputed domain name in bad faith as it has offered to sell the domain name to Complainant at a drastic and unreasonable price and it also diverts users to its pay-per-click website through confusion with the FRANNA mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

C. Additional Submissions

Complainant submitted copies of various trademark registration certificates for its claimed mark.

 

FINDINGS

-       Complainant has rights in the FRANNA trademark and the <franna.com> domain name is identical or confusingly similar to the mark;

-       Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known thereby, and the domain name resolves to pay-per-click links; and

-       The disputed domain name was registered and is used in bad faith where it resolves to a pay-per-click page and seeks commercial gain based on confusion with the asserted mark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the FRANNA mark through registrations with the trademark offices of various countries as noted above. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") Complainant provides screenshots of various trademark registration certificates and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the claimed mark under Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the disputed domain name is identical to its mark but for the addition of the ".com" TLD which fails to distinguish the domain name from the mark. The Panel agrees and finds that the <franna.com> domain name is identical or confusingly similar to the FRANNA mark.

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

Complainant contends that Respondent lacks rights or legitimate interests in the <franna.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the FRANNA mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use complainant's mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, lists the registrant as Reserved for Customers / MustNeed.com and there is no evidence to suggest that Respondent is known otherwise. Further, Complainant specifically states that "Respondent is not affiliated with Complainant. Respondent likewise has not been authorized to use the Offending Domain Name, or to display the FRANNA Marks on the Offending Website." As Respondent has not participated in these proceedings to claim otherwise, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or in a manner that is legitimate noncommercial or fair as it has resolved to a landing page with monetized links. Where the Respondent uses a domain to display a pay-per-click page with links to third-party products or services, Panels often find that respondents fail to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business). Complainant provides a screenshot of the website to which the disputed domain name resolves and these display pay-per-click links titled "Apply Now Jobs", "Explore Careers", and "Remote Work Jobs Hiring". Using a domain name that is confusingly similar to a distinctive mark in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i). This is also not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) as there is no evidence before the Panel that the word "franna" has any generic or descriptive meaning or that it is used as anything other than a trademark for Complainant's products. For its part, Respondent has provided no Response nor made any submission in this case. Therefore, as Complainant has set out a prima facie claim which has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).

 

Considering all of the above, the Panel finds, by a preponderance of the presented evidence, that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent had actual and constructive knowledge of Complainant's rights in the FRANNA mark at the time of registering the <franna.com> domain name. The concept of constructive knowledge has been largely rejected by UDRP Panels except under very specific circumstances. See Pruvit Ventures, Inc. v. Feng Ye, FA 2043049 (Forum May 30, 2023) ("Panels have most frequently declined to find bad faith based upon constructive knowledge.") Also see Limited Stores, LLC v. Infinite Wireless, D2013-1269 (WIPO Aug. 29, 2013) ("As to the contention that the Respondent has constructive notice of the Complainant's trade mark registration, this argument, when it works, generally only works when a respondent is located in the United States.")  However, a respondent's actual knowledge of a complainant's rights in an asserted mark prior to registering a disputed domain name can form a foundation upon which to base an argument for bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).") see also 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"). Complainant's mark is distinctive and appears to be well-known such that Respondent had actual knowledge of the mark and registered the disputed domain name with full knowledge thereof. Submitted into evidence are various news articles which mention the FRANNA mark in relation to Complainant and its products. Further, as the mark is rather distinctive and there is no evidence to suggest that it has any generic or descriptive meaning, this leads the Panel to find it more likely than not that Respondent did have actual knowledge of and targeted Complainant's rights in its mark at the time that it registered the disputed domain name.

 

Next, Complainant argues that Respondent registered and uses the <franna.com> domain name in bad faith because Respondent hosts monetized links to unrelated third-parties. Using a disputed domain name to host advertisements and links may be evidence of bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) ("Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant's business and respondent is likely collecting fees."); see also Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel notes that the screenshot of Respondent's website, provided by Complainant, show the pay-per-click links to third-party websites under the topics "Apply Now Jobs", "Explore Careers", and "Remote Work Jobs Hiring". Upon the evidence presented, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

Complainant also asserts that Respondent sought to sell the disputed domain name to Complainant at the "drastic and unreasonable price" of USD $30,000 under the bad faith scenario set out in Policy ¶ 4(b)(i). However, the Panel declines to consider this argument as the submitted evidence – copies of emails between Complainant and its purchasing agent – shows that it is the agent who initiated the purchase discussions and there is no indication that the Complainant's identity was disclosed to Respondent in a brief exchange with the agent.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <franna.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven M. Levy, Esq., Panelist

Dated: July 25, 2024