Complainant is Mrs. John L. Strong, LLC of Texas, United States of America, represented by Baker Botts, LLP, United States of America.
Respondent is Moniker Privacy Services of Florida, United States of America and Registrant [3452655]: Domain Administrator of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 9, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 9, 2010, Moniker Online Services, 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 Complainant on December 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 17, 2010.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 14, 2011.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 19, 2011. 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
Complainant offers luxury paper products including stationery, hand-engraved steel, and custom-made dyes. Complainant is the owner of various trademark registrations for these goods globally under the mark MRS JOHN L STRONG, including in the United States where Respondent lists its address of record. These registered marks include United States Registration Nos. 3264492 (issued 2007) and 3264493 (issued 2007); as well as European Registration No. 005903505 (issued 2007). Complainant also claims to be the successor of common-law rights in the mark dating from 1929.
The disputed domain name was registered on February 4, 2005. Respondent has no affiliation with Complainant. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing stationery products. Complainant has not authorized these links, nor the use of its trademarks therewith. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark MRS JOHN L STRONG.
With this exact duplication of Complainant’s mark, this Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing stationery products. Complainant has not authorized these links, nor the use of its trademarks therewith. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.1 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 Complainant.
Lorelei Ritchie
Sole Panelist
Dated: February 3, 2011
1 As noted in Section 4 of this Panel’s decision, the disputed domain name was registered on February 4, 2005. While Complainant’s registered trademarks were issued in 2007, Complainant also claims to be the successor of common-law rights in the MRS JOHN L STRING mark dating from 1929. Accordingly, the Panel finds it more likely than not that Respondent registered the disputed domain name with Complainant in mind.
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