WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RMK Merrill Stevens LLC v. Alexey Kaplanskyi, Private
Case No. D2018-2425
1. The Parties
Complainant is RMK Merrill Stevens LLC of Miami, Florida, United States of America (“United States”), represented by Peretz Chesal & Herrmann, P.L., United States.
Respondent is Alexey Kaplanskyi, Private, of Donetsk Oblast, Ukraine.
2. The Domain Name and Registrar
The disputed domain name is <merrill-stevensyachts.com> which is registered with Name.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 1, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received email communications from a third party on November 2 and 5, 2018. Complainant filed an amended Complaint on November 7, 2018.1
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. The Center received an additional email communication from a third party on November 15, 2018. The Center informed the Parties of the commencement of the Panel appointment process on December 6, 2018.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 14, 2018. This Panel finds that it was properly constituted. This 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 has rights over the RMK MERRILL-STEVENS and design trademark for which it holds registration No. 4,843,861 in class 37, registered on November 3, 2015, and the MERRILL STEVENS SINCE 1885 and design trademark for which it holds registration No. 4,941,9572 in class 36, registered on April 19, 2016, both with the United States Patent and Trademark Office (the “Trademarks”). Complainant is engaged in the field of yacht and boat conversion, renovation, refit, repair and brokerage services.
Complainant is the registrant of the domain name <rmkmerrill-stevens.com> which was registered on February 6, 2014.
The disputed domain name was registered on March 15, 2017. At the time the Complaint was filed, the web site associated to the disputed domain name showed, among others, the MERRILL STEVENS SINCE 1885 and design trademark, some legends like “New Yachts”, “Brokerage Yachts”, “Shipyard Miami”, “PURCHASE A NEW YACHT”, “Copyright 2013. Merrill Stevens Yachts. All rights reserved.”, along with images of boats and others.
5. Parties’ Contentions
Complainants’ assertions may be summarized as follows.
Complainant is the owner of the RMK MERRILL-STEVENS (and design) and the MERRILL STEVENS SINCE 1885 (and design) trademark registrations. Complainant’s use has included advertising on its web sites at <rmkmerrill-stevens.com> and <msyachts.com>, which are accessible worldwide. Complainant registered the domain name <rmkmerrill-stevens.com> on February 6, 2014, and the domain name <msyachts.com> on October 30, 2017.3
Complainant is also the owner of common law rights in the MERRILL-STEVENS mark based on use in commerce (through its predecessors) since at least as early as 1930. Further, Complainant has been using the mark MERRILL STEVENS YACHTS for over twenty years.4
Complainant also advertises through multiple print and digital media platforms throughout the United States including Power and Motoryacht Magazine, Compass Magazine, Southern Boating, Yachts International, the yacht Multiple Listing Service (MLS) known as YachtCo and Yacht World, as well as Boat Trader advertisements and at trade shows and industry events, among others.5
The disputed domain name is confusingly similar to the Trademarks. The disputed domain name is identical to Complainant’s MERRILL STEVENS YACHTS mark and nearly identical to Complainant’s MERRILL STEVENS mark. The mere addition of the word “yachts” does not render the disputed domain name dissimilar.
The disputed domain name is also identical to the domain name used by Complainant’s predecessor, who previously operated <merrill-stevensyachts.com> before allowing the domain name registration to lapse.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its trademarks as part of a domain name or elsewhere.
Respondent has not made use or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The web site linked to the disputed domain name appears to pull content from an archived version of <merrill-stevensyachts.com> (through <archive.org>) that was once operated by a predecessor of Complainant. The content of such web site also contains broken formatting and broken links.
Respondent is using the disputed domain name to confuse consumers and divert traffic from Complainant’s web site to Respondent’s for commercial gain or to tarnish Complainant’s trademarks by associating them with archived content from the web site of Complainant’s predecessor with broken formatting and broken links. Such use of Complainant’s trademarks does not constitute use in connection with a bona fide offering of goods or services nor does it constitute a legitimate noncommercial or fair use.
Complainant used its marks in commerce for decades before Respondent registered the disputed domain name, and Complainant’s current web sites were active and accessible worldwide for approximately three years before Respondent registered the disputed domain name. The existence of Complainant’s trademark applications charged Respondent with constructive knowledge of said trademarks before Respondent registered and began use of the disputed domain name. Thus registration and use of the disputed domain name could not have been made in good faith.
Respondent registered the disputed domain name with the intent to either (a) attract Internet users to Respondent’s web site for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the web site associated therewith, or (b) to disrupt the business of Complainant by leading visitors of the disputed domain name to a historical archived copy of the web site that was originally published by Complainant’s predecessor but which now has formatting errors, broken links and an overall unprofessional look. The web site linked to the disputed domain name deceives visitors into believing that Complainant is associated with it and that Complainant’s business is in disrepair, like the condition of such web site.
Prior to the filing of the Complaint, Respondent’s true identity was hidden, as indicated in the corresponding WhoIs record. Respondent’s use of a domain name privacy service to hide its true identity supports a finding of bad faith.
On February 16, 2018 and May 21, 2018, Complainant sent demand letters to Respondent. The letters demanded that, inter alia, Respondent ceased use of Complainant’s marks and transferred the disputed domain name to Complainant.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.6
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
In examining the record of the present case, this Panel wonders whether Complainant could have put forward more evidence. As set forth in other UDRP cases, this Panel reiterates that it is the Parties’ responsibility to present their case with appropriate arguments and evidence.7
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the Trademarks.
Since the addition of a generic Top-Level Domain suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Further, it is also well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark (see Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699, and Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092).
The Trademarks have as common element their portions “merrill-stevens” and “merrill stevens”, respectively. The disputed domain name identically reflects the “merrill-stevens” portion of one of the Trademarks, albeit followed by the term “yachts”. It is clear to this Panel that “merrill-stevens” is the central element in the disputed domain name, and that the addition of such a term in the disputed domain name is not enough to avoid its confusing similarity with the Trademarks.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has not authorized Respondent to use the Trademarks, that Respondent is not commonly known by the disputed domain name and that the web site associated to the disputed domain name pulls content from an archived version of the formerly-active web site once operated by a predecessor of Complainant under <merrill-stevensyachts.com>. Complainant provided a screenshot of the web site associated to the disputed domain name, which shows, among others (see section 4 above), the MERRILL STEVENS SINCE 1885 and design trademark and yacht-related content as if trying to impersonate Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.8 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s registration and use of the Trademarks preceded the creation of the disputed domain name, and that Complainant’s name and the Trademarks reflect the words “merrill” and “stevens”, which confer to them certain distinctiveness, this Panel is of the view that Respondent should have been aware of the existence of Complainant and the Trademarks at the time it obtained the registration of the disputed domain name. The aforesaid is reinforced by the fact that the web site associated to the disputed domain name shows the MERRILL STEVENS SINCE 1885 and design trademark of Complainant and yacht-related content (which is Complainant’s field of activities).
Further, the fact that Respondent has hidden its identity and contact information through a privacy service has been indicative of bad faith under several UDRP decisions (see section 3.6 of the WIPO Overview 3.0).
In sum, the overall evidence in the file shows that Respondent deliberately targeted Complainant and the Trademarks at the time it obtained the disputed domain name, most likely with the intention to benefit from them and to take an unfair commercial advantage, which denotes bad faith.
In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <merrill-stevensyachts.com> be transferred to Complainant.
Date: December 28, 2018
1 The original Complaint was filed against Whois Agent / Domain Protection Services, Inc., which appeared as the registrant of record in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.
2 The corresponding registration certificate contains the legend “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “SINCE 1885”, APART FROM THE MARK AS SHOWN.”.
3 The registrant of record of <msyachts.com> differs from the named Complainant and no explanation in that respect was advanced in the Complaint.
4 Complainant provided no explanation nor evidence on such predecessors. Further, Complainant provided no evidence on the alleged use of those marks since 1930 and for over 20 years, respectively.
5 Complainant provided no evidence of those alleged advertisements.
6 As set forth above, on November 2, 5 and 15, 2018, the Center received informal email communications from a third party, whose most relevant portions read as follows: “I don’t use that domain, and haven’t for many years. I did use it for a time when I worked at Merrill-Stevens.” - “For the record- all those screenshots are archival. That is an old website that no longer exists, and there are no active links on it. It was put up during the time when I had a contract with RMK Merrill Stevens to represent them in yacht brokerage […] my lawyer tells me that I am not part of this litigation as I do not control this URL, nor the website, nor do I hold or exercise any control over its ownership or registration.”.
7 See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661: “The Panel suspects [...] that further evidence could have been produced, but it is not the job of the Panel to hunt it out”. See also Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Facts are proven through evidence [...] Mere ‘assertions’ are nothing more than argument and must in each case be based on facts proved through evidence”.
8 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact”. See also section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).