WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MAC Approved LLC v. Kathleen Canizales
Case No. D2020-2654
1. The Parties
The Complainant is MAC Approved LLC, United States of America (“United States”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is Kathleen Canizales, United States.
2. The Domain Name and Registrar
The disputed domain name <macapproved.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2020, 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 the Complainant on October 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 18, 2020. 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 in the business of providing consulting services to candidates seeking admission to Master of Business Administration (“MBA”) academic programs. The Complainant asserts that it has used the mark MAC APPROVED since at least as early as January 2013 in connection with these services. From November 13, 2013, to October 2018, the Complainant asserts that it operated its website at the disputed domain name. But, it did not renew the registration, and the Respondent subsequently registered the disputed domain name without the Complainant’s authorization or approval.
The disputed domain name was registered on November 13, 2013. The WhoIs information for the disputed domain name was updated on November 4, 2019, which is when the Complainant believes that the Respondent registered the disputed domain name. The Respondent has used the disputed domain name to publish a website nearly identical to the Complainant’s website. Additionally, the Complainant claims that the Respondent has made slight alterations to the website at the disputed domain name to direct consumers to other websites to allegedly collect information from those consumers.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant does not rely on any trademark registration to support the claim that it has rights in the MAC APPROVED mark. But, the Complainant does assert that it has extensively used, promoted, and advertised its services under that mark for more than seven years to generate tens of thousands of USD in revenue for such services. And third parties – as shown by the Complainant’s evidence – have come to recognize the Complainant as a leader in the category of services it provides. Accordingly, the Complainant asserts, and the Panel agrees, that the mark MAC APPROVED represents valuable goodwill associated with and owned by the Complainant.
The disputed domain name incorporates the MAC APPROVED mark in its entirety, making the disputed domain name identical to such mark.
Accordingly, the Panel finds that the Complainant has met this first element under the policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts that the Respondent has, without the authorization of the Complainant, used the disputed domain name to establish a bogus website that imitates the Complainant’s website. Additionally, the Respondent has developed that website in a way to direct users to other online locations, for purposes of collecting information about those online users.
The Respondent has not introduced any of its own evidence to contradict these assertions. The Panel finds that the Respondent’s activity – as described by the Complainant and supported by the record – does not rise to the level of a bona fide use of the disputed domain name, nor does it meet any of the other criteria set out in the Policy that could show the Respondent’s rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not come forth with evidence to rebut that showing. The Panel finds that the Complainant has satisfied this second element of the Policy.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
The Panel finds, based on the available record, that the Respondent registered and is using the disputed domain name in bad faith. Establishing a website to essentially misrepresent its operator as the Complainant, and using the disputed domain name that incorporates the Complainant’s mark for purposes of gathering user information, is a clear example of bad faith registration and use under the Policy.
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 <macapproved.com> be transferred to the Complainant.
Evan D. Brown
Date: December 2, 2020