DECISION

The Charles Machine Works, Inc. v. Mark Evans / Angaroutev

Claim Number: FA2410002119067

PARTIES

Complainant is The Charles Machine Works, Inc. ("Complainant"), represented by Ross N. Chaffin of Tomlinson McKinstry, P.C., Oklahoma, USA. Respondent is Mark Evans / Angaroutev ("Respondent"), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thecharlesmachineworks.com>, registered with NameCheap, Inc.

PANEL

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.

James Bridgeman SC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 4, 2024; Forum received payment on October 4, 2024.

On October 4, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <thecharlesmachineworks.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@thecharlesmachineworks.com.

Also on October 15, 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 November 5, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

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 disputed domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in THE CHARLES MACHINE WORKS as a trademark at common law.

Complainant asserts that while it uses DITCH WITCH and HAMMERHEAD TRENCHLESS as trademarks to sell equipment, it has been known in its industry as "The Charles Machine Works, Inc." for over sixty-seven years. In support of this assertion Complainant has exhibited the results of a business entities search that confirms that it was registered in Oklahoma on January 2, 1957.

Complainant also asserts that it owns a number of Internet domain names including <charlesmachineworks.com>, <charlesmachine.works>, <charlesmachine.net>, and <charlesmw.com>, which are similar to the disputed domain name.

Firstly, Complainant alleges that the disputed domain name is identical or confusingly similar to THE CHARLES MACHINE WORKS trademark in which it claims rights at common law because it includes the mark which is its business name in its entirety.

Consequently, Complainant argues that consumers are likely to be confused into believing that the disputed domain name, and the associated e-mail addresses are sponsored by or affiliated with Complainant when in fact this is untrue.

Additionally, Complainant submits that of the generic Top-Level Domain ("gTLD") extension <.com> is immaterial for the purposes of comparison under the Policy. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of top level to a domain name is irrelevant to Policy ¶ 4(a)(i) analysis).

Complainant next alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that

· Respondent is not commonly known by or as "The Charles Machine Works", citing Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark);

· neither is Respondent is commonly known by the disputed domain name;

· Respondent has no statutory or common law trademark rights or any other right or legitimate interest in or to THE CHARLES MACHINE WORKS as a trademark, or in the disputed domain name;

· Respondent has not received Complainant's permission to use THE CHARLES MACHINE WORKS as a trademark, citing Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).

· Respondent is not a licensee of Complainant;

· Complainant's prior rights in the THE CHARLES MACHINE WORKS precede Respondent's registration of the disputed domain name;

Complainant refers to a screen capture of the content of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint which references plastics recycling, foam mattresses, and similar products and falsely purports to offer these products from an address which is actually the mailing address of Complainant.

Complainant submits that these products and services are not provided at the address of Complainant given at the fraudulent website; adding that these products and services are unrelated to the "equipment" which appears to be offered as collateral for Respondent's attempt to acquire money from a lender.

Complainant adds that on about July 26, 2024, a person identifying themselves as "Gregory Moore", with a 580 area code (the area code for Complainant's place of business of Perry, OK), contacted a bank with which Complainant has an existing relationship. This individual was fraudulently seeking an equipment financing loan of three hundred thousand dollars ($300,000), based upon alleged gross annual sales of seven hundred fifty million dollars ($750,000,000).

In support of this assertion Complainant refers to a copy of the referenced internal email from a "Virtual Small Business Specialist" within the bank to a colleague within the bank. The email gives details of the loan applicant named "Gregory Moore" purporting to have the business name "The Charles Machine Works Inc." and have a contact email address at <gregory@thecharlesmachineworks.com>.

Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that the only reason for Respondent to use the terms "The Charles Machine Works" in the disputed domain name could be to trade on Complainant's goodwill and facilitate an identity fraud scheme premised upon the creation of confusion.

Complainant adds that registration in bad faith is demonstrated by Respondent's false use of Complainant's name, address, and phone number as shown in the exhibited screen capture of the website to which the disputed domain name resolves, and Respondent's attempts to defraud at least one lender using Complainant's credit and notoriety.

Complainant adds that the exhibited email between the employees of the bank demonstrates that the disputed domain name is being used to perpetrate a fraud which constitutes use on bad faith for the purposes of the Policy.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant asserts that it is a seller of "equipment" and claims to have common law rights in the eponymous trademark THE CHARLES MACHINE WORKS.

The disputed domain name was registered on October 13, 2023, and resolves to a website that purports to present Respondent as a "Plastic Recycling Company".

There is no information available about Respondent, who availed of a privacy service to withhold its identity on the published WhoIs, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar disclosing Respondent's identity in response to a request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

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 has no registered trademark rights in THE CHARLES MACHINE WORKS, and has failed to prove that it has its claimed rights, or indeed any trademark rights in THE CHARLES MACHINE WORKS at common law.

This Panel accepts that Complainant's corporate name is The Charles Machine Works, Inc. and it was established in Oklahoma on January 2, 1957, as shown in the exhibited business entities search. However the registration of a corporate name or a business name does not create trademark rights per se.

Complainant asserts that it is a seller of "equipment", but does not explain the type of equipment and has not provided any evidence of the products it sells or the services that it produces, or any use of THE CHARLES MACHINE WORKS on its goods or services.

In order to succeed in establishing that it has common law trademark rights in THE CHARLES MACHINE WORKS as claimed, Complainant would be required to provide evidence of its use of the mark in business to distinguish its good and services to a sufficient extent to establish a protectable reputation and goodwill in the mark.

As Complainant has failed to meet the requirements of the first element of the test in Policy ¶ 4(a)(i), this application must be refused and it would be inappropriate to proceed to consider and determine the other elements of the Complaint.

Rights or Legitimate Interests

As Complainant has failed to establish that it has the rights which it claims in the trademark THE CHARLES MACHINE WORKS it would be inappropriate to make any findings relating to Policy ¶ 4(a) (ii).

Registration and Use in Bad Faith

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <thecharlesmachineworks.com> domain name REMAIN WITH Respondent.

_____________________________________________

James Bridgeman SC, Panelist

Dated: November 11, 2024