WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MKR, Inc v. PrivacyProtect.org, Robert Hauck a/k/a Robert Brown

Case No. D2010-1851

1. The Parties

The Complainant is MKR, Inc of Randolph, New Jersey, United States of America, represented by Florek & Endres PLLC, United States of America.

The Respondent is PrivacyProtect.org, Robert Hauck a/k/a Robert Brown of Moergestel, the Netherlands and Summerville, South Carolina, United States of America, respectively.

2. The Domain Name and Registrar

The disputed domain name <mulchexpressusa.com> (the “Domain Name”) is registered with Answerable.com (I) Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 2, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2010, and after the Center sent several reminders, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on November 13, 2010 and a second amended Complaint on November 17, 2010.

The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 20, 2010. 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

The Complainant is a Delaware business corporation based in New Jersey. The Complainant sells and delivers landscaping mulch to residential and commercial property owners. According to the Declaration of Complainant’s principal M. Sedorak and supporting documents attached to the Complaint, the Complainant acquired the assets of this business from a predecessor in December 2008, including the MULCH EXPRESS USA mark that the predecessor and a joint venture had used since 2001. That mark was registered by the United States Patent and Trademark Office (USPTO) on December 30, 2008 as a standard character mark (United States Registration No. 3552440) in the name of the joint venture in which the Complainant’s predecessor participated. The subsequent assignment of the mark to the Complainant is reflected in the USPTO trademark database.

According to the Registrar, the Domain Name was originally created on August 15, 2002. As is evident from screen shots stored by the Internet Archive and available through its Wayback Machine service, the Complainant’s predecessor operated a website associated with the Domain Name from at least April 2003. According to the Sedorak Declaration, the Domain Name and the website’s prominent position in search engine results for “mulch” products was a significant factor in the Complainant’s decision to purchase the predecessor’s business.

In June 2009, the Complainant was advised by its predecessor that the Domain Name registration would shortly expire. When the Complainant attempted to renew the registration two days later, however, it was unable to do so and learned that the registration had already been transferred to the current Registrar and registered in the name of the Registrar’s domain privacy service. After being notified of the current dispute, the Registrar identified the registrant as the Respondent Robert Hauck and provided administrative contact details.

Emails from the Complainant’s counsel resulted in a reply from a “Robert Brown”, who said the Domain Name had expired and “we have picked up the domain name and will look to develop this for ourselves”. Mr. Brown offered alternatively to discuss leasing the Domain Name to the Complainant. Subsequently, Mr. Brown communicated with the Complainant’s customer service personnel on this topic in live chat exchanges. Mr. Brown said that he had “backordered” the Domain Name and acquired it automatically when it was not renewed on expiration. In a live chat session with the Complainant’s customer service staff on September 7, 2010 (a printout of which was furnished with the Complaint) Mr. Brown said that “we backorder domain names that are about to expire” and explained his interest in acquiring the Domain Name as follows:

“your domain name was ranked very high for ‘mulch’ keywords esp on google.”

Mr. Brown went on to emphasize how much business this high ranking with search engines could mean for the Complainant. Mr. Brown declined to transfer the Domain Name but offered to lease it to the Complainant for USD 30,000 per year.

In another live chat session on November 17, 2010, after the Complaint was filed in this proceeding, “visitor” (presumably the Respondent, since “visitor” referred to his intention to file a Response to the amended UDRP Complaint) mentioned an earlier chat session concerning the Domain Name and repeated his point that the Complainant would lose business by allowing the Respondent to keep control of the Domain Name:

“i dont know how well ur marketing when some of ur customers are sending us quotes for ur services or materials . . . we simply tell them that we are no longer in business”.

The domain privacy service, PrivacyProtect.org, has asserted no interest in the Domain Name in this proceeding, and the Panel concludes on the available record that “Robert Brown” is an alias, or perhaps associate, of Mr. Hauck, who appears to be the real party in interest with respect to the registration of the Domain Name and subsequent efforts to lease it to the Complainant. Accordingly, and in the absence of a Response establishing anything to the contrary, the Panel will henceforth refer to Mr. Hauck a/k/a Mr. Brown as “the Respondent”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its registered MULCH EXPRESS USA mark and that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant points to the communications from the Respondent, seeking to lease the Domain Name to the Complainant for an amount far in excess of normal registration costs, as evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

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

(ii) the 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.

Under paragraph 15(a) of the Rules:

“A Panel shall 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.”

A. Identical or Confusingly Similar

The Complainant is the owner of record of the registered trademark MULCH EXPRESS USA. This is identical to the Domain Name except for the latter’s omission of spaces, which are not permitted in URL addresses. The Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s mark for purposes of the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Respondent has not submitted a Response or provided any evidence or arguments in this proceeding asserting rights or interests in the Domain Name. The Respondent’s correspondence with the Complainant, however, indicates that the Respondent selected the Domain Name because (a) the name was scheduled to expire in the near future and (b) Google searches for “mulch” ranked the website associated with the Domain Name very high in the search results.

In the instant case, the Respondent has not used the Domain Name nor produced evidence of demonstrable preparations to use the Domain Name for a purpose relevant to its generic sense. Moreover, the Domain Name is a composite of a longer and more distinctive string of characters that is identical to the Complainant’s mark.

Under these circumstances, discussed further below in connection with the third element of the Complaint, the Panel finds no persuasive evidence that the Respondent had rights or legitimate interests in the Domain Name (Panel’s emphasis). Thus, the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

It does not appear that the Respondent has used or made preparations to use the Domain Name for a website or as an email domain. In correspondence with the Complainant, the Respondent said that he acquired the Domain Name (apparently in the summer of 2009) because it was set to expire shortly and because it was ranked highly in search results related to “mulch”. It is improbable that the Respondent learned this much without visiting the associated website and becoming aware of a business using a corresponding and distinctive trademark. Thus, on the available record, it appears more likely than not to the Panel that the Respondent registered the Domain Name because of its trademark rather than generic value.

When contacted by the Complainant, the Respondent emphasized how much business the Complainant was losing by not having the Domain Name, and the Respondent said that he was telling prospective customers that the Complainant was no longer in business. The Respondent asked for USD 30,000 as an annual fee to lease the Domain Name to the Complainant.

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; …”

Given the Respondent’s own account of acquiring the Domain Name, and the Respondent’s subsequent conduct, the Panel concludes that the Respondent most likely registered the Domain Name primarily for the purpose of selling or leasing it to the Complainant for an amount substantially in excess of the Respondent’s out-of-pocket costs, which the Respondent ultimately attempted to do. The Panel concludes that the Domain Name was registered and used in bad faith within the meaning of the Policy.

7. Decision

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

W. Scott Blackmer
Sole Panelist
Dated: January 4, 2010