WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mountain Creek Investments Inc. v. Ryan Grassie, ForceFive Media
Case No. D2017-2176
1. The Parties
The Complainant is Mountain Creek Investments Inc. of Calgary, Alberta, Canada, represented by MLT Aikins LLP, Canada.
The Respondent is Ryan Grassie, ForceFive Media of Ottawa, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <moosemcguires.com> is registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2017, 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 November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Center received only informal communications from the Respondent on November 14, 2017. The Center informed the Parties of the commencement of Panel appointment process on December 5, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 4, 2018. 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 operates a restaurant business known as Moose McGuire’s Beanery & Bar Room located in Alberta, Canada. The Complainant owns a number of trademark registrations for the marks related to the restaurant, including MOOSE MCGUIRE’S Canadian Trademark Registration No. TMA631532, registered on January 31, 2005. The restaurant has used the mark in association with the restaurant services since at least October 15, 2000.
The Respondent Ryan Grassie of ForceFive Media is in the business of web development and registering and purchasing domain names. The Respondent registered the disputed domain name <moosemcguires.com> on November 6, 2013. The disputed domain name resolves to a website with a link to a third party’s restaurant known as Moose McGuire’s Pub and Grill located in Ottawa, Ontario.
5. Parties’ Contentions
The Complainant submits that it owns several trademark registrations related to its restaurant, including MOOSE MCGUIRE’S (TMA631552), MOOSE MCGUIRE’S BEANERY & BAR ROOM DESIGN (TMA600078), MOOSE MCGUIRE’S BEANERY & BAR ROOM (TMA631414).
The Complainant further contends that the disputed domain name <moosemcguires.com> is identical to the Complainant’s registered MOOSE MCGUIRE’S trademark, as it consists entirely of the distinctive words “MOOSE MCGUIRE’S”.
Rights and Legitimate interests
The Complainant submits that the Respondent does not have any legitimate rights or interests in the <moosemcguires.com> disputed domain name. “Moose McGuire” is a fictitious name developed and owned by the Complainant, and the Respondent is not commonly known by the name. The Respondent has never been authorized or licensed by the Complainant. The Complainant contends that the Respondent is using a confusingly similar domain name for purposes of promoting a business that is in direct competition with the Complainant’s business for monetary gain, which is not a bona fide offering of goods and services.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name <moosemcguires.com> in bad faith because (i) the Respondent was likely aware of the Complainant’s registered trademark rights in MOOSE MCGUIRES, when the Respondent registered the confusingly similar disputed domain name; (ii) the Respondent has registered the confusingly similar domain name for promoting its restaurant services which is in direct competition to the Complainant’s restaurant services; (iii) the Respondent has registered other domain names which are confusingly similar to third party registered trademarks which is evidence of cybersquatting under the Policy; and (iv) the Respondent failed to respond to the Complainant’s cease and desist letter and demand to transfer the disputed domain name.
The Respondent provided a brief email response indicating that the disputed domain name was registered in his name for his client Moose McGuire’s Pub and Grill located in Ottawa, Ontario and that the Respondent continues to hold the website as collateral against payment for the work performed for which he has not been paid.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. Merlin Attractions Operations Limited v Adam West, WIPO Case No. D2014-0351.
The Complainant has provided evidence that the mark MOOSE MCGUIRE’S exists in Canada under its ownership by virtue of the Trademark Registration No. TMA631532.
On the question of confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Merlin Attractions Operations Limited v Adam West, WIPO Case No. D2014-0351; Disney Enterprises, Inc v John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489.
The disputed domain name differs from the Complainant’s trademarks by the addition of the generic Top-Level Domain, i.e. “.com”, and the possessive apostrophe.
To the extent that the Complainant's trademarks include the possessive apostrophe, the difference with the disputed domain name can be disregarded as a mere difference in punctuation, especially as in general domain names may consist only of alphanumeric characters and hyphens: see for example, Merlin Attractions Operations Limited v Adam West, WIPO Case No. D2014-0351.
Accordingly the Panel finds that the disputed domain name <moosemcguires.com> is confusingly similar to the Complainant’s trademark MOOSE MCGUIRE’S. As such, the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent can demonstrate his rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent 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 in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. See Merlin Attractions Operations Limited v Adam West, WIPO Case No. D2014-0351.
The onus of proving this requirement, like each element, falls on the complainant. However, UDRP panels have recognized the difficulties inherent in disproving a negative, since much of the relevant information is likely to be in the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent, triggering a shift in the burden of proof to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to adduce such evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant submits that its restaurant has operated under the name “Moose McGuire’s Beanery and Bar” since 1995, and has provided accounting documents evidencing such use from at least October 15, 2000. The Complainant relies on its Canadian Trademark MOOSE MCGUIRE’S, which was registered on January 31, 2005, for use in association with restaurant services.
The disputed domain name was registered on November 6, 2013. The Complainant further alleges that its Ottawa competitor (which is not a party to these proceedings) opened its Moose McGuire’s Pub and Grill on December 12, 2014.
Based on these findings, the Complainant has established that it owns longstanding trademark rights in MOOSE MCGUIRE’S in association with restaurant services, which predate the disputed domain name registration by the Respondent by at least eight years. In his informal response, the Respondent has failed to provide any probative evidence to support a legitimate right or interest on his behalf. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The Complainant alleges that the Respondent’s actions offend paragraph 4(b)(iv) of the Policy which states that bad faith can be found by inference where the use of the disputed domain creates a likelihood of confusion with the Complainant’s mark in certain circumstances. WIPO Overview 3.0, section 3.2.1, provides guidance in this respect as it relates to bad faith use under paragraph 4(b)(iv) of the Policy:
“Application of UDRP paragraph 4(b)(iv): in some cases, e.g., where it is unclear why a domain name was initially registered and the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with a complainant’s mark, panels have found that UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut. Such inference would be supported by a clear absence of the respondent’s own rights or legitimate interests, the nature of the domain name itself (i.e., the manner in which the domain name incorporates the complainant’s mark), the content of any website to which the domain name points – including any changes and the timing thereof, the registrant’s prior conduct generally and in UDRP cases in particular, the reputation of the complainant’s mark, the use of (false) contact details or a privacy shield to hide the registrant’s identity, the failure to submit a response, the plausibility of any response, or other indicia that generally cast doubt on the registrant’s bona fides.”
In the specific circumstances of the case, an inference of bad faith registration is justifiable, based on the factors set out below. The Respondent, as established in Paragraph 6.B, does not himself own rights or legitimate interests in the disputed domain name. The disputed domain name is functionally identical to the Complainant’s trademark MOOSE MCGUIRES. The website hosted on the disputed domain name serves as a link to third party restaurant services, which are exactly the same services provided by the Complainant and also constitute exactly the same services enumerated in the Complainant’s trademark registration. As currently used, the disputed domain name actually diverts traffic to a competitive third party website. The Complainant’s mark was registered in January 2005 and predates the registration date of the disputed domain name by more than eight years. The trademark in question has distinctively Canadian content, and all parties operate their businesses in Canada. Instead of providing a substantive explanation, the Respondent has positioned itself as holding the disputed domain name because it holds a grievance against a past client for non-payment. The Panel notes that the bona fides of the Respondent’s client are beyond the scope of this proceeding, although it appears this third party restaurant business only began its operations in late 2014. In the circumstances, that is insufficient to overcome the inference of bad faith drawn from the established facts.
In view of the particular circumstances in this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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, <moosemcguires.com> be transferred to the Complainant.
Christopher J. Pibus
Date: January 22, 2018