WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honeywell Safety Products USA, Inc. v. Michele Dinoia, Macrosten LTD.
Case No. D2015-1834
1. The Parties
The Complainant is Honeywell Safety Products USA, Inc. of Rhode Island, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Michele Dinoia, Macrosten LTD. of Nicosia, Cyprus, represented by Roberto MANNO - WEBLEGAL, Italy.
2. The Domain Name and Registrar
The disputed domain name <muckboot.com> (the “Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2015. The Response was filed with the Center on November 9, 2015. On November 16, 2015, the Center received the Complainant’s supplemental filing. On November 20, 2015, the Respondent filed further submissions in response to the Complainant’s supplemental filing.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 19, 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.
After having considered the supplemental filings by both parties, the Panel finds that neither raises any additional evidence or arguments outside of what has (or could have) been submitted in the Complaint and the Response. The Panel will therefore not accept either parties’ unsolicited supplemental filings and will determine the case based solely on the Complaint and the Response.
4. Factual Background
The MUCK BOOT business was launched in 1999, and was subsequently acquired by the Complainant in 2008. The Complainant’s MUCK BOOT business manufactures and sells waterproof footwear. The Complainant is the holder of U.S. registered trade mark rights in THE ORIGINAL MUCK BOOT COMPANY device mark (registered on October 5, 1999), MUCK mark (registered on October 5, 1999), THE ORIGINAL MUCK BOOT COMPANY mark (registered on December 23, 2008) and MUCK BOOT CO. device mark (registered on December 23, 2008) (collectively referred to as the “Muck Boot Marks”). The Complainant also owns the domain name <muckbootcompany.com>, which resolves to the Complainant’s official website.
The Respondent is in the business of registering and selling domain names. The Disputed Domain Name automatically resolves to a parking page or other sponsored websites.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant and its predecessor have been using the Muck Boot Marks continuously and extensively since 1999, and the Complainant has registered trade mark rights in the Muck Boot Marks. The Disputed Domain Name is confusingly similar to the Complainant’s Muck Boot Marks. The dominant and most distinctive part of the Complainant’s Muck Boot Marks are MUCK and MUCK BOOT, which are incorporated into the Disputed Domain Name. The Respondent’s omission of the elements “THE”, “CO.” and “COMPANY” (which appear in some of the Muck Boot Marks) do not distinguish the Disputed Domain Name from the Muck Boot Marks. The domain extension “.com” should be disregarded.
(b) The Respondent acquired the Disputed Domain Name on or around April 26, 2015; 16 years after the first use and registration of the Complainant’s Muck Boot Marks. The Respondent must have been aware of the Complainant’s well-known Muck Boot Marks before he registered the Disputed Domain Name, as it incorporates the distinctive part of the Complainant’s Muck Boot Marks and resolves to a parking page which includes links to websites that refer to or offer the Complainant’s footwear for sale. The Complainant has never authorized the Respondent to use the Complainant’s Muck Boot Marks, and there has never been any relationship between the Complainant and Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the Disputed Domain Name.
(c) The Respondent appears to be a domain name reseller, based on the Respondent’s website “www.macrosten.com”. The Disputed Domain Name automatically redirects users to a variety of websites, the most common of which is a parking page containing sponsored links to third party websites, including links to competitors of the Complainant, in order to enable the Respondent to generate pay-per-click revenue. Such use cannot amount to a bona fide offering of goods or services or a legitimate interest.
(d) There is no basis for the Respondent to have chosen to register the Disputed Domain Name, other than to create a misleading association with the Complainant. The Disputed Domain Name is confusingly similar to the Complainant’s Muck Boot Marks, and will mislead consumers into believing that the Disputed Domain Name is related to or associated with the Complainant. The Respondent is using the Disputed Domain Name in bad faith to intentionally trade on the Complainant’s reputation and divert, for commercial gain, Internet users to the Complainant’s competitors and to earn pay-per-click revenue.
The Respondent’s contentions can be summarised as follows:
(a) The Respondent is in the business of registering generic and descriptive words, including for resale purposes.
(b) The Respondent registered the Disputed Domain Name on March 28, 2003. The changes in ownership since the Disputed Domain Name was registered do not amount to fresh registrations, as the Respondent has always been the underlying registrant.
(c) The Respondent denies having registered the Disputed Domain Name on the basis of the Complainant’s Muck Boot Marks, and claims that it had no knowledge of the Complainant at the time that the Respondent registered the Disputed Domain Name. The Disputed Domain Name consists of 2 dictionary words; “muck” and “boots”, which, even if combined together, describe the characteristics of a product, i.e., footwear for outdoor use).
(d) At the time that the Disputed Domain Name was registered (i.e., March 28, 2003), the Complainant did not own registered trade mark rights in the MUCK BOOTS mark. The only mark that contained both of the words “muck boot” in the U.S., as at March 28, 2003, was the Complainant’s THE ORIGINAL MUCK BOOT COMPANY device mark. The Respondent contends that this device mark consists of a complex configurative elaboration of the generic words “muck” and “boot”, and is not enough to claim valid trade mark rights relating to the Disputed Domain Name. The Complainant has also provided no evidence that it has common law rights in MUCK BOOTS prior to 2003, or that such mark was well-known. As such, the Respondent asserts that it is impossible for him to have constructive notice of the Complainant’s rights before the Disputed Domain Name was registered.
(e) The Complainant is barred by the doctrine of laches, as it waited 15 years after the Disputed Domain Name was originally registered before filing the Complaint.
(f) The Respondent confirms that the Disputed Domain Name is listed on <premiums.com> website as a valuable domain name consisting of generic or descriptive words. Trading in premium domain names is a legitimate activity, so long as it is not used in any way to profit from any trade mark value in the generic words. The Respondent owns a large portfolio of generic and descriptive domain names.
(g) The Internet parking service provider for the Disputed Domain Name automatically generates and displays links based on the contextual meaning of the terms contained in the Disputed Domain Name, i.e., “muck” and “boots”. Such use could give right to rights or legitimate interest.
(h) The Respondent states that it did not acquire the Disputed Domain Name for the purpose of selling it to the Complainant or its competitors.
(i) The Respondent’s lack of bad faith registration and use in respect of its generic domain names has been repeatedly affirmed by panelists, and the Respondent provides a list of 8 cases where decisions have been issued in his favor.
(j) The Respondent requests that a determination of Reverse Domain Name Hijacking be found against the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or is being used by the Respondent in bad faith.
Doctrine of Laches
The Panel notes that the Respondent seeks to rely on the doctrine of laches to deny the Complainant’s Complaint. It is well established that the doctrine of laches does not apply under the Policy (see Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; TMK A/S v. woosan, James Motors, WIPO Case No. D2012-2073). However, an inordinate delay in bringing proceedings may still be taken into account in the assessment of the Complaint, as “even if laches does not apply, delay may reflect the strength, or lack thereof, of a complainant’s case” (see Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139). In this case, no evidence has been provided by the Respondent to show that the Complainant has been aware of the Disputed Domain Name for a significant amount of time, nor that the Respondent may have relied on any such knowledge (had it existed). As such, the Panel will not take into account the length of time between registration of the Disputed Domain Name and the date the Complaint was filed in assessing the evidence.
A. Identical or Confusingly Similar
The Respondent claims that he had no knowledge of the Complainant’s trade mark rights, and that the Complainant’s had no such rights, at the time he registered the Disputed Domain Name. However, whether or not the Respondent was aware of the Complainant’s rights at the time it registered the Disputed Domain Name is irrelevant for the purposes of considering this first element, but may be relevant in determining the second and third element below. The test for determining whether or not the first element is satisfied simply involves a comparison between the trade mark and the Disputed Domain Name itself.
The Panel accepts that the Complainant has rights in the Muck Boot Marks based on its trade mark registrations in various jurisdictions, including in the U.S., since 1999.
The Disputed Domain Name incorporates the dominant and distinctive part of the Complainant’s Muck Boot Marks in their entirety, i.e., “muck” and “muck boots”. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Muck Boot Marks.
It is well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the MUCK BOOT mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the MUCK BOOT mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent is in the business of registering domain names for the purposes of using them in relation to pay-per-click advertising and/or to re-sell them for profit. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as it does not encroach on a complainant’s trade mark rights.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’… or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” A common example of permissible use of parking pages or pay-per-click links, which may amount to a right or legitimate interest, is a domain name that consists of a dictionary or common word, and the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No.D2005-0424).
Whilst the Panel accepts that the words “muck” and “boot” may by themselves be generic words, the combination of both words is more unusual (being, at best descriptive) and is not commonly used. As such, the Panel is not convinced that the Respondent registered the Disputed Domain Name with the generic words in mind for the purposes of legitimately using the Disputed Domain Name in relation to their generic meaning. This is based on the following:
(a) the Muck Boot Marks have been in use since 1999, which is long before the Disputed Domain Name was acquired by the Respondent. In particular, Complainant is the holder of U.S. registered trade mark rights in THE ORIGINAL MUCK BOOT COMPANY device mark (registered on October 5, 1999) and MUCK mark (registered on October 5, 1999);
(b) the parking page to which the Disputed Domain Name sometimes resolves includes click-through links to competitors of the Complainant;
(c) the Respondent, and his various companies (Macrosten Ltd, SZK.com and CDN Properties Incorporated) has been subject to over 70 UDRP proceedings administered by the Center or the National Arbitration Forum;
(d) from the Panel’s brief review of the other UDRP proceedings to which the Respondent and his various companies have been involved, the Panel found that the Respondent registers domain names that incorporate third party brands or trade marks, including ones that prima facie appear to be generic phrases. For example, some of the domain names previously registered by the Respondent and subject to UDRP proceedings (where decisions were issued against the Respondent), include <wwwfootlocker.com>. <choicehotel.com> and <quality-inn.com>, <globemail.com>, <realmadrid.org>, <honeybakeham.com>, etc). The Respondent uses most of these domain names to resolve to parking pages which contain links incorporating the relevant complainant’s trade marks and refers users to various other websites, including competitors of the complainant. In particular, the Panel refers to HBH, Limited Partnership v. Michele Dinoia/ SZK.com, WIPO Case No. D2005-1159, which involved the Respondent and the domain name <honeybakeham.com>. In that case, the panellists held that the complainants “contention that its first use of trademarks “HONEY BAKED” and “HONEY BAKED HAM” pre-dates the Respondent’s registration of the Domain Name is accurate. Thus, the Panel agrees that it was indeed highly unlikely that the Respondent was unaware of the Complainant’s trademarks. Moreover, even if Respondent were unaware – something discussed herein only for the sake of argumentation –, Respondent must bear the burden for failing to act with as little diligence as performing a trademark or website search (at no cost at all) that would have disclosed the existence of Complainant. See also Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; Venator Group Retail Inc v. Michele Dinoia d/b/a SZK.com, NAF Case No. 101506; Lowermybills.com, Inc. v. Michele Dinoia, NAF Case No. 183728; Materia, Inc. v. Michele Dinoia, NAF Case No. 1627209; GROUPE CANAL+ SA v. CDN Properties Incorporated, WIPO Case No. D2009-0457; Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688.
As stated by the panelist in Electronic Arts Inc. v. Michele Dinoia, NAF Case No. 1403750, which involved the Respondent and the domain name <dungeonkeeper.com>:
“Respondent registers large number of domain names and must be particularly careful with respect to the rights of others claiming an interest in such name. ‘[T]hose who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: ‘It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights’”.
In light of the above, the Panel finds that the Respondent registered the Disputed Domain Name to trade off the goodwill of the Complainant’s mark in order to increase its pay-per-click revenue.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
In order to satisfy paragraph 4(a)(iii) of the Policy, the Complainant must establish that the Respondent both registered and used the Disputed Domain Name in bad faith.
The Respondent alleges that the Disputed Domain Name was registered by him in 2003. According to the WhoIs History cache records on Domain Tools, the Disputed Domain Name was registered in 2003 and has been transferred to various different registrants (including the Respondent). Whilst the Respondent only acquired the Disputed Domain Name in his own name on or around April 26, 2015, the Panel accepts that the Respondent was the underlying registrant of the Disputed Domain Name since at least 2007 (the earliest WHOIS History cache record on Domain Tools). This is based on the WhoIs History records (which name the Respondent as the administrative contact of the original registrant) and Mirza Juddani v. CDN Properties Incorporated CDN Properties Incorporated, WIPO Case No. D2014-1354.
The Panel relies on paragraph 3.7 of the WIPO Overview 2.0, which provides that “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.”
However, either way, and even taking the 2003 date into account, the Disputed Domain Name was registered after the Complainant acquired both registered and unregistered rights in the Muck Boot Marks in 1999.
Based on the fact that Muck Boots Mark has been continuously used since 1999, and the Respondent is in the business of registering domain names that inter alia reflect third party brands (including those that appear on the face of it to be generic phrases), the Panel finds that the Respondent likely knew about the Complainant, and purposefully registered the Disputed Domain Name in bad faith with the intent of misleading Internet users into believing that the Disputed Domain Name was associated with the Complainant.
Further, the Disputed Domain Name resolves automatically to sponsored websites or to a parking page, which includes sponsored links to competitors of the Complainant. This is a common example of bad faith use. It is well established that even if the registrant is not exercising direct control over the content, the registrant remains responsible for the content appearing on any website to which its domain name resolves (e.g., sponsored links that are automatically generated). As stated in paragraph 3.8 of the WIPO Overview 2.0, to “the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trade marks. (…) It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.” See also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Panel finds that the Disputed Domain Name has been used by the Respondent for the purposes of intentionally attempting to attract Internet users in order to generate pay-per-click or other advertising revenue, by creating a likelihood of confusion with the Complainant’s Muck Boot Marks.
Lastly, the Panel finds that the Respondent has engaged in a pattern of bad faith conduct as: (i) he has registered many domain names which incorporate third party marks; and (ii) the Respondent and its businesses have been the subject of over 70 UDRP proceedings; the majority of which have been determined in favor of the complainants. These cases demonstrate that the Respondent is a regular cyber squatter.
As stated by the panel in Materia, Inc. v. Michele Dinoia, NAF Case No. 1627209, the “Respondent is a well-known cybersquatter and typosquatter. She does not merely trade in supposedly generic or descriptive domain names. She has a history of cybersquatting and typosquatting by purchasing domain names – like MATERIA.COM – containing prominent third-party trademarks (or common misspellings thereof). See, e.g., AnheuserBusch, Incorporated v. Michele Dinoia, FA0206000114465 (Nat. Arb. Forum 2002).”
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel has found that the Complainant has satisfied all three elements of the Policy, and therefore rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking.
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 <muckboot.com> be transferred to the Complainant.
Date: December 3, 2015