The Complainant is PC Mall Inc. of Torrance, California, the United States of America, represented by Morrison & Foerster, LLP, the United States of America.
The Respondent is MacMallCn.com of Beijing, the People’s Republic of China / Ping Ruanxin of Guangzhou, Guangdong, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2010. On October 12, 2010, the Center transmitted by email to the registrar N LLC, a request for registrar verification in connection with the Disputed Domain Name. On the same day, N LLC 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 15, 2010 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 16, 2010. In response to a request by the Center, the Complainant filed another amended Complaint on October 20, 2010. The Panel proceeds to decide the Complaint on the basis of this later amended Complaint.
The Center verified that the Complaint together with the amended Complaints 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 October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit a Response. Accordingly the Center notified the Respondent’s default on November 11, 2010.
The Center appointed Clive Duncan Thorne as the sole Panelist in this matter on November 19, 2010. 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
According to the Complainant, the Complainant sells consumer electronics and computer related products and services including computer hardware, software, peripherals, accessories, supplies, books and instructional materials and installation, maintenance and repair services. Since 1987, the Complainant has sold consumer electronics and computer related products and services through an online network and advertisements in the U.S. national magazines. Beginning in 1994, the Complainant has also sold its products and services through catalogues that are sent directly to current and potential customers. In recent years, the Complainant has mailed in excess of 75 million catalogues per year. In addition, it has sold consumer electronics and computer related products and services over the Internet through a variety of websites since 1995.
The Complainant through its predecessor in Interest and wholly-owned subsidiary first adopted and began commercially using the mark MACMALL in 1989. This is a date before registration of the disputed domain name on August 20, 2010.
The Complainant has two trademark registrations for the mark MACMALL in the United States both of which predate the registration of the disputed domain name. These are registration number 2021649 in classes 35, 37 and 42, and registration number 1938926 in class 16. In support of its application for registration of those marks, the Complainant submitted that it had been continuing using the mark MACMALL for more than five years after the registration dates of these registrations. The Complainant’s registrations in the United States are evidenced in Exhibit 4 to the Amended Complaint.
The Complainant also owns national trademark registrations for marks incorporating the name MACMALL in respect of computer related products, retail sales and online retail sales in Australia (No. 655674), Benelux countries (No. 572158), Canada (No. 514321), European Community (No. 004309266), France (No. 95559684), Germany (No. 39512085), Italy (No. 735886), Japan (No. 5241940), South Africa (No. 199514846), Spain (No. 1953315) and the United Kingdom (No. 2012069). Copies of the Certificates of Registration are set out in Exhibit 5 to the Complaint.
The Complainant also submits that as a result of its widespread use of and promotion of the mark MACMALL, throughout the United States since 1989, the mark embodies the Complainant’s substantial and valuable goodwill in the mark.
In 1995, the Complainant’s predecessor in interest and wholly-owned subsidiary registered a number of domain names which the Complainant or its predecessor in interest and wholly-owned subsidiary has been using continually since then, for the purpose of offering its goods and services. These domain names are and . They are evidenced at Exhibit 6 to the Amended Complaint. Attached at Exhibit 7 to the Amended Complaint are copies and printouts from the “www.” website as it appeared on October 11, 2010.
According to the Complainant, the history of the present dispute is that the Respondent registered the disputed domain name on August 20, 2010 and then subsequently began using the disputed domain name in connection with a website that purportedly sells Apple products including the MacBook laptop computers and iPad tablets as well as products from other consumer-electronics manufacturers. This is evidenced at Exhibit 8 to the Amended Complaint from which it can be seen that in addition to using the disputed domain name, the Respondent prominently uses the mark MACMALL.
At Exhibit 9 to the Amended Complaint are copies of email correspondence relating to customer complaints about the Respondent’s website. The Panel has read the correspondence which is evidence of confusion between the Respondent’s website and the activities of the Complainant. By way of example, an email dated September 8, 2010 from an individual refers to “some kind of coopracition (sic) ” between the parties.
In the absence of any evidence to the contrary filed by the Respondent, the Panel accepts the truth of the above facts as submitted by the Complainant and proceeds to determine this Complaint on that basis. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name is virtually identical or confusingly similar to the Complainant’s trademarks MACMALL. It submits that the disputed domain name consists of the trademark MACMALL together with a suffix consisting of two letters “cn”. It submits that this is confusingly similar.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that on the evidence the Respondent has not made use of the disputed domain name in connection with the bona fide offering of goods or services. It submits that the Respondent is not commonly known by the disputed domain name. It also submits that there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or authorization to use the disputed domain name. It submits that the Respondent is not making legitimate, noncommercial or fair use of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith. The Complainant submits on the evidence that the Respondent has registered and used the disputed domain name in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks within paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant submits that the disputed domain name incorporates the Complainant’s trademark MACMALL in its entirety and merely adds two letters “cn” to the end of the trademark together with the use of the non-distinctive top-level domain “.com”. It submits that the disputed domain name is virtually identical and thus confusingly similar to the Complainant’s trademark MACMALL in which it has worldwide rights.
The Panel, on the basis of its findings with regard to the evidence of the Complainant’s trademark rights, accepts that the Complainant has trademark rights in the mark MACMALL.
It also accepts the submissions that the addition of the generic letters “cn” does not diminish the likelihood of confusion between the Complainant’s MACMALL mark and the disputed domain name. It agrees with the Complainant that for the purpose of the Internet, the combination of letters “cn” is commonly recognized as the country code for China and also constitutes the country code top-level domain for China. To that extent, the letters “cn” are descriptive of China from where, on the evidence, the Respondent trades.
In the Amended Complaint the Complainant refers to a number of authorities of previously decided Panel decisions. In particular, it refers to the decision of F. Hoffmann – La Roche AG v. Web Marketing Limited,WIPO Case No. D2006-0005, which supports the principle that it is “well established that incorporating the entirety of the mark into a domain name is sufficient to establish that a domain name is confusingly similar to the registered mark”.
In the present case, the Panel finds on the evidence that the disputed domain name is confusingly similar to the registered mark. It is supported in this view by the finding in F. Hoffmann – La Roche AG v. Web Marketing Limited, supra.
It therefore follows that the Complainant succeeds in establishing this element. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. It also submits the Respondent is not commonly known by the disputed domain name. The Panel accepts this second submission. There is no evidence to the contrary establishing any entitlement on the part of the Respondent to use the disputed domain name on the basis that it is commonly known by the disputed domain name or a name incorporating the mark MACMALL.
Moreover, there is no evidence of any relationship between the Complainant and the Respondent that would give rise to any consent on the part of the Respondent to use the disputed domain name. On the current records, the Panel find that the fact that the Respondent may be using the domain name to attract customers to a website by reference to the use of the mark MACMALL does not entitle it to obtain or establish rights or legitimate interest in the domain name. The Panel is supported in this view by the cited earlier panel decision of Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057. C. Registered and Used in Bad Faith
The Complainant relies, in particular, upon paragraph 4(b)(iv) of the Policy which provides:-
“(iv) By using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its website] or other online location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation or endorsement of [its website] or location of a product or service on [its website] or location.”
In the Panel’s view, on the basis of the evidence adduced by the Complainant and set out in Exhibits 8-9 of the Amended Complaint, there is no doubt that the Respondent is promoting itself by reference to the mark MACMALL and that parts of the Respondent’s website are taken directly from the Complainant’s own trading website. In the Panel’s view, this is sufficient, in the absence of any evidence or submissions to the contrary, to establish that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant succeeds in establishing this element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Dated: December 3, 2010.
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