The Complainant is Mana Productions, Inc. of Long Island City, New York, United States of America represented by Day Pitney LLP, United States of America.
The Respondent is Chadwick Martin of Woodstock, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2010. On November 17, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 17, 2010, GoD, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on December 16, 2010.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 22, 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
The Complainant, in business for decades before this dispute, is a United States of America company that produces and markets hair, body and skin care products and services. It has registered its MANA mark with the United States Patent and Trademark Office (“USPTO”) as a trademark (Registration No. 3,765,835; issued March 30, 2010) and service mark (Registration No. 3,777,027; issued April 20, 2010).
The Respondent is the owner of the disputed domain name, . The date of registration is December 15, 2008. The Respondent uses the name to resolve to his website, which offers hair care products for sale under the MANA mark, including “Mana Hot Oil Treatment”. 5. Parties’ Contentions A. Complainant
Established in 1975, the Complainant is a United States of America company that specializes in the production and sale of beauty products, including products for hair, body and skin care. Its products and services in these fields have gained a reputation for high quality. Since its inception, the Complainant has spent millions of dollars to advertise the products and services sold under its trademark.
The Complainant owns numerous active trademark registrations with the USPTO for its MANA mark. The Complainant also owns the domain name, , through which it markets its products and services.
The Respondent uses the disputed domain name to host a website that offers hair care products sold under the MANA mark, including “Mana Hot Oil Treatment”. The website also refers to “Mana Home”, “Mana Personal Care”, “Mana Store” and “Welcome to Mana Products”. The Complainant has not authorized or licensed the Respondent to use the MANA mark in connection with the Respondent’s offerings.
The disputed domain name, , is virtually identical and/or confusingly similar to the Complainant’s MANA trademark. The addition of the generic word, “oil”, fails to effectively distinguish the name from the trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not making a bona fide use of the name. Rather, the Respondent employs its website found at the disputed domain name to pass off competing goods as those of the Complainant – thus trading off of the goodwill created by the Complainant.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent must have known of the Complainant’s mark because the Respondent’s website refers to “Mana products”. The Respondent is attempting intentionally to gain commercially through Internet user confusion as to the source, sponsorship and/or endorsement of its website with respect to the Complainant’s well-recognized trademark. Finally, the Respondent may not avoid the charge of bad faith by now changing the website placed at the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As set forth in paragraphs 4(a)(i) – (iii), the Policy requires that the Complainant prove the following in order to obtain a transfer of the disputed domain name, :
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
Because the Respondent failed to submit a Response, the Panel will consider as true all of the Complainant’s reasonable contentions, unless those contentions are persuasively contradicted otherwise in the record. See, Randstad General Partner (U.S.), LLC v. Domains For Sale For You,WIPO Case No. D2000-0051 (“Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.”); and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”). A. Identical or Confusingly Similar
By virtue of the evidence (Exhibit E) put forward to validate its USPTO trademark and service mark registrations, the Complainant has convinced the Panel that the Complainant has sufficient rights in its MANA mark to satisfy the requirements of Policy paragraph 4(a)(i)). See, Tiffany (NJ) LLC and Tiffany and Company v. Jack Gogle,WIPO Case No. D2009-0188 (“Complainants have established their rights in the mark TIFFANY by virtue of the evidence of the United States federal trademark registration.”); and Microsoft Corporation v. Stephan Burkes d/b/a MicrosoftZone.Com, NAF Claim No. FA652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Because of the added word, “oil”, the disputed domain name, , is clearly not identical to the Complainant’s mark, MANA. However, numerous prior UDRP panels have ruled that the mere addition of a generic term to an established trademark or service mark does not prevent a finding of confusing similarity between a domain name and that mark. See, for example, The Gillette Company v. RFK Associates, NAF Claim No. FA492867 (finding that the disputed domain name, , is confusingly similar to the complainant’s DURACELL mark); and Accenture Global Services GmbH v. Alok Mishra,WIPO Case No. D2007-0559 (where the panel held to be confusingly similar to the mark, ACCENTURE). In this case, the additional generic term, “oil”, relates directly to the Complainant’s hair care product line, and thus, in the Panel’s view, contributes to – not reduces – the confusion between the disputed domain name and the Complainant’s mark. Consequently, the Panel believes that the disputed domain name is confusingly similar to that mark.
Accordingly, the Panel rules that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name through the demonstration of rights in the MANA mark and the assertion that the Respondent was neither authorized nor licensed to use that mark in a domain name. To prevail in these proceedings, the Respondent must rebut that prima facie case with clear evidence that he does possess such rights and interests. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (“…once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); and Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Claim No. FA154527 (“When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”).
As noted above, the Respondent has not filed a Response in this case, so the Panel must search elsewhere in the record for any possible rebuttal to the prima facie case put forward by the Complainant. In doing so, the Panel believes it should consult paragraph 4(c) of the Policy, which sets forth three ways in which the Respondent might have established rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to subparagraph 4(c)(ii), the Panel cannot find any evidence in the record to indicate that the Respondent, nominally Chadwick Martin, was or is commonly known as , the disputed domain name. In consideration of the other two subparagraphs, 4(c)(i) and 4(c)(iii), the Panel is compelled – as explained above – to accept as true the Complainant’s reasonable contention that the Respondent uses the disputed domain name to market hair care products under the Complainant’s mark without permission to do so. The Panel finds that such action constitutes neither a bona fide offering of goods or services nor noncommercial or fair use of the name, thus failing to satisfy the requirements of either subparagraph. See, Instron Corporation v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, NAF Claim No. FA768859 (“…where Respondent markets and sells durometers in direct competition with Complainant and prominently displays Complainant’s SHORE mark … the Panel finds that Respondent’s use of the disputed domain names … does not constitute a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy [paragraph] 4(c)(iii)”).; and Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (“The Panel finds that Respondent's registration and use of the Domain Name without Complainant's permission for a website selling both Complainant's products and directly competing products does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy.”). Therefore, the Panel finds that neither the Respondent nor the record effectively rebut the Complainant’s prima facie case.
As a result, the Panel rules that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant registered its trademark and service mark, MANA, with the USPTO after the Respondent registered the disputed domain name. Given that circumstance, the Panel might be inclined to dismiss bad faith registration of the disputed domain name because, reasonably, the Respondent may have been unaware of the Complainant’s mark at the time of such registration. See, for example, Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827.
However, it is clear to the Panel that, prior to registration of the disputed domain name, the Respondent was aware of the Complainant’s mark and its business, as the Panel accepts the Complainant’s reasonable contention that the Respondent’s website uses said mark in connection with the offering of hair care products that are similar to those sold by the Complainant. The Panel believes it highly unlikely that the Respondent would utilize the term, “mana” – seemingly otherwise unrelated to hair care – unless he was aware of the Complainant’s application of the same term to hair care products. Moreover, the Panel also accepts the truthfulness of Complainant’s assertions that it engaged in voluminous business and advertising under its mark – sufficient evidence to sustain a finding that the Complainant possessed common law trademark rights in the MANA mark – for decades prior to registration of the disputed domain name. Thus, as distinguished from the circumstances existing in the cases cited above, the circumstances in the instant case allow for a finding that the Respondent did possess the requisite knowledge upon which a finding of bad faith registration and use could be predicated.
As stated above, the Panel accepts the Complainant’s reasonable and non-rebutted contention that the Respondent has used Complainant’s mark in connection with competing products offered through the website found at that name. This deliberate attempt by the Respondent to gain commercially from the likelihood of confusion as to whether his website is affiliated with or sponsored by the Complainant provides ample evidence to prompt the Panel to issue a finding of bad faith registration and use of the disputed domain name per paragraph 4(b)(iv) of the Policy. See, Cigna Intellectual Property, Inc. v. Yun Sung Lee,WIPO Case No. D2003-1042 (“By advertising products which might be generally associated with the Complainant's mark, it appears that the Respondent is attempting for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant's mark.”); and Hewitt Associates LLC v. Robin Cuff, NAF Claim No. FA376375 (“The [disputed] domain name is being used to intentionally attempt to attract Internet users to a website that purports to offer loans under Complainant’s name. … Thus, the Panel determines that Respondent’s attempts to divert Internet users for commercial gain by attracting them to its website through a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy [paragraph] 4(b)(iv).”).
In light of the above, the Panel determines that the Complainant has proven that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all 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, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: January 5, 2011
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