WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McKinna Corporation v. PXP
Case No. D2000-1174
1. The Parties
Complainant is McKinna Corporation ("Complainant" or "McKinna") a California, U.S.A. corporation with offices at 400B N. Flagler Drive, West Palm Beach, Florida 33401, USA, and represented by Charles Fowler, Esq., Lyon & Lyon LLP, Irvine, California, USA.
According to the Registrar of the domain name at issue, Respondent is PXP, represented by an individual listed as "Shandy T", with address P.O. Box 1870, Phoenix, Arizona, U.S.A.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is: mckinnayachts.com
The Registrar is: Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration & Mediation Center (the "Center") received a hard copy of McKinnaís Complaint on September 6, 2000, and a copy by e-mail on September 12, 2000. The Center requested verification from the Registrar on September 12, 2000, and received such verification on September 14, 2000. On September 15, 2000, the Center sent a Complaint Deficiency Notification to McKinna, and McKinna replied to this notification on September 18, 2000. The Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Supplemental Rules of the Policy and then determined, in accordance with Paragraph 4 (c) of the Policy that the formal date for the commencement of the administrative proceeding was September 18, 2000. Thereafter, the Center transmitted, or repeatedly sought to transmit the Complaint to the various addresses and e-mail addresses registered by the Respondent. On October 9, 2000, the Center issued a Respondent Default Notification.
On October 12, 2000, the Center notified that the undersigned had been appointed as the Sole Panelist to decide this matter.
No further communications were received from the parties, or solicited by the Panelist.
4. Factual Background and The Partiesí Contentions
A. Brief Factual Background
Complainant has, since 1995, been engaged in the business of building and selling luxury motor yachts in Newport Beach, California. Complainant avers, and submits substantial documentation and sworn declarations to the effect, that it has been using the "MCKINNA" and "MCKINNA YACHTS" marks from 1995, both on its products and in various advertisements. According to the Complaint, McKinna has continuously used these marks in this manner since that time. The marks are also used in promotional material and advertisements for McKinna goods and services on a website with domain name "mckinna.com". None of the trade and/or service marks upon which Complainant bases its rights here are, according to Complainant, registered with any state authority.
In April 1999, Respondent PXP registered the domain name "mckinnayachts.com" which is at issue in this case. According to the Complaint, until very recently an Internet user attempting to access the complained of domain nameís website was redirected to a website entitled "hotdomains4sale.com". That website includes instructions as to how to bid for domain names. Currently, the complained of domain name leads to an Internet dead-end. The record on this matter contains little information as to the exact nature or identity of the putative registrant and Respondent "PXP", and it appears that both Complainant and the Center have recently been unable to contact Respondent at the various addresses which it gave to the Registrar of the disputed domain name. Complainant, however, submits the sworn declaration of Mr. Garrett Martin, an executive of a McKinna subsidiary, to the effect that he contacted a PXP representative by phone in January 2000, in order to try to obtain the transfer of the disputed domain name to the Complainant. Mr. Martinís declaration reports that the PXP representative told him that PXP would agree to the transfer of the domain name in exchange for one of McKinnaís motor-yachts. The lowest price for any McKinna motor-yacht available at that time was about US$ 500,000.
The facts of this case, to the extent relevant or pertinent to the discussion and decision herein, will be further discussed below.
B. The Partiesí Contentions
Complainant, in summary, contends as follows: that Respondent is a "prototypical cybersquatter" who registers domain names corresponding to well-known trademarks for the sole purpose of attempting to resell them at a huge profit; that McKinna is the owner of the marks "MCKINNA" and "MCKINNA YACHTS" for motor-yacht design, manufacture and sale; that it is not required under the Policy that Complainantís mark be registered with a governmental authority, and that Complainant has common law service mark rights; that Respondentís domain name is identical to Complainantís "MCKINNAYACHTS" trade and/or service mark and confusingly similar to McKinnaís "MCKINNA" trade and/or service mark; that Respondent has no rights nor legitimate interest in said domain name, but is merely a cybersquatter; that there is no indication that Respondent is using or has made any preparations to use the disputed domain name in connection with any bona fide offering of goods or services or any other use that might confer on Respondent a legitimate right to the disputed domain name pursuant to the Policy; that Respondentís pattern of registering domain names for sale and specific offer to exchange the domain name for a yacht constitutes clear and ample evidence that the disputed domain name has been registered and is being used in bad faith; and that the false or incorrect addresses which Respondent gave to the domain name Registrar constitute further evidence of bad faith.
Respondent did not reply to the Complainantís contentions, or make any submission in this proceeding.
5. Discussion and Findings
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following: (i) that the domain name complained of is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that Respondent has no right or legitimate interest in respect of the domain name; and (iii) that the domain name in dispute has been registered and is being used in bad faith.
A. Identity or Confusing Similarity
There is no question that the disputed domain name is identical or virtually identical to the mark "MCKINNA YACHTS" in which Complainant claims an interest. It is less clear, but on the facts here evident, that the complained of domain name is also confusingly similar to Complainantís trade or service mark "MCKINNA".
There is, however, an issue as to whether Complainant "has rights" in the above trade or service marks, given that, by its own admission, such marks have not been registered. It should first be pointed out that Paragraph 4 (a) (i) of the Policy does not, by its express terms, require that the trade or service marks on which Complainant bases its rights be registered, but only that Complainant "has rights" in such marks. Furthermore, Panelists interpreting the Policy early on determined that the WIPO Final Report on the Internet Domain Name Process of April 1999, from which the Policy is derived, also does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. See The British Broadcasting Corporation v. Jaime Rentera, Case Nį D2000-0050; cf. Bennett Coleman & Co. Ltd. v. Steven F. Lalwani and Bennett v. Long Distance Telephone Company, WIPO consolidated cases D2000-0014 and 0015 ("it is the reputation from actual use which is the nub of the Complaint not the fact of registration as trademarks"). These views were further discussed and confirmed in MatchNet PLC v. MAC Trading, Case Nį D2000-0205; see also SeekAmerica Networks Inc. v. Tariq Massoud and Solo Signs, Case D2000-0131. This Panel agrees with, and adopts, the principle that the trade or service marks on which a Complaint of abusive domain name registration under the Policy is made need not necessarily be registered. It is, however, in the view of this Panel necessary that the Complainant make an appropriate showing that it "has rights" in the marks upon which is bases its Complaint. See Policy, Paragraph 4 (a) (i). In the instant case, Complainant has made a strong and substantiated showing that it has made use of its marks in paid advertising going back at least four years, on the motor-yachts themselves, and in one or more websites sponsored by the Complainant or its subsidiary. This active promotion of Complainantís products, name and marks long precedes (and likely provoked) Respondentís registration of the disputed domain name. The Complainant furthermore cites some apposite provisions of U.S. Federal Case Law to the effect that the marks it claims are inherently distinctive (rather than descriptive) and, that given their specific and consistent use they can, and Complainant avers have, generated common law trademark and service mark rights since at least April 1996, when they were unquestionably used in commerce. See Kendall-Jackson Winery v. E&J Gallo Winery, 150 F. 3rd 1043 (9th Cir. 1998); Brookfield Communications v. West Coast 174 F. 3rd 1036 (9th Cir. 1999). Finally, it is evident on the record here that Respondent intentionally registered a domain name that would cause confusion with Complainantís name and website; an act which would be nugatory if the name was not already well known in the yachting marketplace.
On the record here, Complainant has demonstrated a right to trade and/or service marks "McKinna" and "McKinna Yachts", and it is clear that the domain name in dispute is identical and confusingly similar to said marks.
B. Rights or Legitimate Interests
There is no indication in the record that Respondent has any rights or legitimate interests in the domain name "mckinnayachts.com". There is no indication that Respondent is called McKinna, just as there is no indication that Respondent is in any manner connected with yachts or yachting. Indeed, there is no indication that the domain name, which is currently dormant, was ever used or planned to be used in connection with any bona fide offering of goods or services, such as might justify Respondentís rights under Paragraph 4 (c) (i) of the Policy. There is, on the other hand, substantial evidence to the effect that Respondent registered the disputed domain name with a view towards its profitable resale. This evidence of bad faith, which is discussed immediately below, further comforts the conclusion that Respondent has no rights or legitimate interest in the disputed domain name.
C. Bad Faith
Complainant has submitted substantial and convincing evidence that Respondent registered mckinnayachts.com, and numerous other domain names containing the name of well-known or established companies, for the purpose of listing them on the "hotdomains4sale.com" website, which website contains instructions about how to bid for the listed domain names in question.
Complainant has furthermore submitted a sworn declaration of an executive of Complainantís southern California subsidiary that a representative of Respondent offered to transfer the disputed domain name in exchange for a luxury motor-yacht.
The evidence on the record in this case well supports a finding that Respondent has registered and used the disputed domain name in bad faith within the meaning of, inter alia, Paragraph 4 (b) (i) of the Policy, and this Panel so finds.
The Panel concludes that: (a) the domain name mckinnayachts.com is identical and confusingly similar to marks in which Complainant has rights; (b) that Respondent has no rights or legitimate interest in said domain name; and (c) that Respondent registered and used that domain name in bad faith. Therefore, pursuant to Paragraph 4 (i) of the Policy, the Panel orders that the domain name mckinnayachts.com be transferred to Complainant, McKinna Corporation.
Nicolas C. Ulmer
Dated: November 1, 2000