WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mack Trucks, Inc. v. Yvonnetty Myweather
Case No. D2013-2249
1. The Parties
The Complainant is Mack Trucks, Inc. of Greensboro, North Carolina, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Yvonnetty Myweather of Harrisburg, Pennsylvania, United States.
2. The Domain Name and Registrar
The disputed domain name <macktrucksusa.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 31, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 5, 2014. 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 one of the world’s leading manufacturers of commercial trucks and truck parts. The Complainant has been using the trademark MACK, either standing alone or in combination with other word and/or design elements (the “MACK Marks”) in the United States for its trucks and truck parts since as early as 1901. Since 1922, the Complainant or its predecessors have used the designation “Mack Trucks, Inc.” as a company name and the Complainant is commonly referred to by consumers and throughout the industry and trade as “Mack Trucks”. The Complainant is the holder of numerous trademark and service mark registrations in the United States and throughout the world.
The Complainant owns registrations for a number of domain names which include the MACK Marks, such as <macktrucks.com>, <mack-shop.com>, <mackgranite.com>, <mackterrapro.com>, <macktrucksmedia.com> and <mackpinnacle.com>.
The Disputed Domain Name was registered on October 13, 2013, long after the MACK Marks became well known in the United States and abroad. When one searches for the Disputed Domain Name, one arrives at a cached page promoting “Honda Prosurvey Mfg., Inc.”. At the time of rendering this Decision, the Disputed Domain Name resolves to a page that states “Kroger Mark Company” and has a registered members area with a place to type in a job ID and password. The banner states “Online Results 24x7 -- Whenever you want, Wherever you are, with a Password Secured Access.”
5. Parties’ Contentions
The Complainant alleges that the Disputed Domain Name is identical and/or confusingly similar to its registered MACK Marks because it consists of the Complainant’s well-known trademarks together with the descriptive term “usa”.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, as Respondent has never been licensed or otherwise permitted by the Complainant to use the MACK Marks, and has not been commonly known by the names “Mack” or “Mack Trucks”. Further, the Complainant submits that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, but rather to derive monetary benefit from the website to which the Disputed Domain Name resolves.
The Complainant alleges that the Respondent registered the Disputed Domain Name because it knew of the Complainant’s international reputation for commercial trucks and sought to take advantage of the significant goodwill and worldwide reputation attached to the MACK Marks.
The Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. In support of this claim, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet traffic to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website. In addition, the Complainant contends that the Respondent is engaged in a phishing scheme intended to defraud Internet users. The Complainant alternatively claims that even if the Respondent is not engaged in a phishing scheme, the Respondent’s bad faith registration and use are established by the likelihood that Internet users will mistakenly believe that the Disputed Domain Name is connected to, associated with, or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the MACK Marks based on longstanding use as well as its United States and foreign trademark registrations for the MACK Marks. The Disputed Domain Name consists of the MACK TRUCK trademark followed by the geographic abbreviation “usa” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of descriptive words. F. Hoffman-La Roche AG v. Globex International, WIPO Case No. D2006-1008. The mere addition of the country abbreviation “usa” to the Complainant’s MACK TRUCK trademark does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).
Finally, the addition of a gTLD such as “.com” after a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademarks. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name to disrupt the Complainant’s business and for commercial gain. In addition, the Respondent registered the Disputed Domain Name on October 13, 2013, long after the MACK Marks had become world famous and distinctive.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s MACK Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its MACK Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Second, the Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s MACK Marks. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Finally, the Respondent knew or should have known of the Complainant’s rights in its trademarks when registering the Disputed Domain Name. The Complainant’s MACK Marks are extremely well-known and widely used. Most significantly, some of the Complainant’s MACK Marks have been in use by the Complainant since 1901. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its MACK Marks when registering the Disputed Domain Name or creating its website. Indeed, when a domain name contains a well-known trademark, no other action, aside from registering the domain name, is required for a finding of bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). Therefore, based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <macktrucksusa.com> be transferred to the Complainant.
Lynda M. Braun
Date: February 10, 2014