WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Uline, Inc. v. Matthew McCarthy

Case No. D2015-1496

1. The Parties

Complainant is Uline, Inc. of Prairie, Wisconsin, United States of America, represented by Laurence A. Barry, United States of America.

Respondent is Matthew McCarthy¹ of Edina, Minnesota, United States of America self-represented.

2. The Domain Name and Registrar

The disputed domain name <ulineboxes.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 31, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2015. Respondent requested a four-day extension on September 21, 2015. The Response was filed with the Center on September 25, 2015.

The Center appointed Robert Badgley as the sole panelist in this matter on October 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant manufactures and sells numerous products, including boxes and other packaging and shipping supplies, under the registered trademark ULINE. One such registration is United States Patent & Trademark Office Registration No. 4284651 in February 2013.

Complainant also sells its wares under the ULINE mark at its website, located at “www.uline.com”.

Respondent, who was a minor when he registered the Domain Name in December 2014, claims that he registered the Domain Name in conjunction with a video game he is developing. According to Respondent, the game entails the lining up of boxes (“Think Candy Crush,” Respondent states). According to Respondent, the attraction of the Domain Name was that “you” is shortened to “u” and “line” is an Internet diminutive of “online.”

Respondent claims that he has incurred “a few thousand dollars in expenses developing this game.” No evidence of these alleged expenses, nor indeed of demonstrable preparations to develop the video game in question, is annexed to the Response.

Beginning in January 2015, Complainant began to communicate with Respondent’s mother (Respondent was still a minor at the time, but he attained his majority prior to the filing of this Complaint) about the allegedly infringing Domain Name. Communications between Complainant and Respondent’s mother carried on until shortly before the filing of the Complaint.

At some point in time after the initial communication between the parties, the Domain Name was listed at the website “www.afternic.com” as being available for purchase for USD 10,000. A minimum offer of USD 5,000 was also solicited at this site.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has satisfied all of the elements required for a transfer of the Domain Name under the Policy.

B. Respondent

Respondent’s alleged motives are as described above. According to Respondent, Complainant has engaged in a campaign of bullying Respondent and his mother.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There is no dispute that Complainant holds rights in the registered mark ULINE. As respects confusing similarity, the Panel concludes that the Domain Name is in fact confusingly similar to the ULINE mark. The Domain Name wholly incorporates the ULINE mark, and adds the generic word “boxes”. Because boxes are among the goods sold by Complainant under the ULINE mark, the addition of that word in the Domain Name merely aggravates the confusing similarity between the mark and the Domain Name.

The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is common ground that Complainant has not authorized Respondent to use its ULINE mark in a domain name and that Respondent is not an authorized reseller or distributor of Complainant’s wares. Respondent sets forth a story regarding his motives, but provides absolutely no evidence to support it. On the limited records before it, the Panel finds no basis to believe Respondent’s account, and the Panel concludes that Respondent is not using of the Domain Name in connection with a bona fide offering of goods or services.

The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of paragraph 4(b)(i) of the Policy. As discussed above, Respondent has provided no evidence to back up his story. The only verifiable action that Respondent took vis-à-vis the Domain Name was to list it for sale for USD 10,000 at an auction site. Again, on this limited record, the Panel finds it more likely than not that Respondent registered the Domain Name primarily for the purpose of selling it at a profit. Based on this finding, the Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(i).

The Panel concludes that Complainant has established paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ulineboxes.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: October 17, 2015

¹ The Panel notes that the WhoIs indicates “Michael McCarthy” as the Registrant Name. However, the named Respondent in the Complaint reflects “Matthew McCarthy”. The Respondent also referred to himself as “Matthew McCarthy” in the Response and the Registrar has confirmed that the Respondent, “Matthew McCarthy” is the registrant of the Domain Name in its verification response to the Center. Accordingly the Panel treats “Matthew McCarthy” and “Michael McCarthy” as the same person.