The Complainant is Mack Trucks, Inc. of United States of America, represented by Kilpatrick Townsend & Stockton LLP of United States of America.
The Respondent is PrivacyP of Luxemburg / Purple Bucquet of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2011. On January 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2011, 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 January 20, 2011, 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 January 25, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2011.
The Center appointed David Stone as the sole panelist in this matter on March 1, 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
The Complainant is one of the world’s leading manufacturers of commercial trucks and truck parts. It has sold vehicles under the trade mark MACK since 1901 including in Europe, Africa, Asia, Australasia and the Americas.
The Complainant currently owns a large international portfolio of trade mark registrations consisting of or comprising the marks MACK and MACK TRUCKS. The Complainant additionally owns registrations for a number of domain names which include the MACK mark, such as , , and .
The disputed domain name was registered on August 5, 2007. The disputed domain name resolves to a web page featuring sponsored links to websites of competitors of the Complainant as well as to unrelated goods and services. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical and/or confusingly similar to its registered trade marks MACK and MACK TRUCKS because it consists of the Complainant’s well-known marks together with the descriptive term “parts”.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, has never been licensed or otherwise permitted by the Complainant to use the MACK trade mark, and has not been commonly known by the names “Mack” or “Mack Truck”. Further, the Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but, rather to derive monetary benefit from click-through revenue at the website to which the disputed domain name resolves.
The Complainant submits that the Respondent registered the disputed domain name because it knew of the Complainant’s international reputation for commercial trucks and sought to take advantage of the significant goodwill and reputation attached to the MACK marks.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. In support of this submission the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain by way of click-through revenue, Internet traffic to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website. The Complainant further contends that the Respondent’s attempts to conceal its identity and contact information also indicate the Respondent’s bad faith. Furthermore, the Complainant relies on the Respondent’s registration and use of other domain names comprising or containing other well- known third party trade marks as further evidence of bad faith usage and indeed a pattern of such conduct.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the marks MACK and MACK TRUCKS in a number of countries around the world and has acquired significant reputation and goodwill in these marks globally. The Panel finds that MACK and MACK TRUCKS are widely known marks, at least in relation to trucks.
Previous UDRP panels have held that adding common terms, such as “parts”, to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022).
The Complainant also offers for sale component parts for its vehicles, as well as parts replacement services. The Panel finds that the addition of the descriptive word “parts” to the Complainant’s MACK TRUCKS trade mark, by referencing goods for which the mark is widely known, increases the likelihood of confusion: see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; Google Inc. v. Thilak Raj, Net Jobs,WIPO Case No. D2009-0033; and LEGO Juris A/S v. Private, Registration / Dohe Dot,WIPO Case No. D2009-0753.
Accordingly, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trade mark in which it has rights. The Complainant has therefore established element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three (non-exhaustive) circumstances are identified: (i) bona fide prior use; (ii) common association with the domain name and (iii) legitimate noncommercial or fair use.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise the right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant (or advance any other arguments supporting its rights or legitimate interests).
Accordingly the Panel finds that the Complainant has established element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy.
Four (non-exhaustive) circumstances are identified where the respondent’s intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows: (i) to sell the domain name to the rights holder at a profit; (ii) to repeatedly prevent the rights holder registering a corresponding domain name; (iii) to disrupt the business of a competitor; and (iv) to divert Internet traffic by creating a likelihood of confusion. The Complainant refers to paragraph 4(b)(iv), as well as the Respondent’s attempts to conceal its identity and its previous abusive domain name registrations as evidence that the Respondent registered and used the disputed domain name in bad faith. The Respondent has not submitted any counter-arguments.
Given the widely known reputation of the MACK and MACK TRUCKS marks for commercial trucks, the Panel finds that in all likelihood the Respondent was aware of the Complainant’s widely known MACK and MACK TRUCKS trade marks at the time the disputed domain name was registered. Indeed, a brief search by the Respondent on any major Internet search engine at the date of registering the disputed domain name would almost certainly have revealed the Complainant’s existence. The website at the disputed domain name has been set up to provide links to websites of the Complainant’s competitors, no doubt on a “pay-per-click” basis. Applying the comments of the panel in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s marks.
Further to previous UDRP panel decisions, the Respondent’s attempts to conceal its identity using the services of PrivacyP and by specifying only a PO Box number in Panama as its contact address further indicate in this Panel’s opinion that the registration of the disputed domain name has been made in bad faith: see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Société Nationale de Radiodiffusion Radio France v. France Info, WIPO Case No. D2002-1052.
The Complainant has listed the following earlier UDRP decisions finding abusive domain name registrations made by the same Respondent: Starwood Hotels & Resorts Worldwide Inc. and Westin Hotel Management LP v. PrivacyP/ Purple Bucquet,WIPO Case No. D2010-0525; Elite Licensing Company SA, Elite Model Management v. Privacyp/Purple Bucquet, WIPO Case No. D2010-1441; Government Employees Insurance Company v. PrivacyP / Purple Bucquet, WIPO Case No. D2010-1746; AB Electrolux v. Purple Bucquet / PrivacyP, WIPO Case No. D2010-1853; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Purple Bucquet / Privacy P, WIPO Case No. D2010-1787; Morningstar, Inc. v. Purple Bucquet c/o Purple, NAF Claim No. FA1002001310402 (April 12, 2010); Wells Fargo & Company v. Purple Bucquet, NAF Claim No. FA1009001347807; Morgan Stanley v. Purple Bucquet / Purple, NAF Claim No. FA1007001336613; Continental Airlines, Inc. v. Purple Bucquet / Purple, NAF Claim No. FA1007001334508; AOL Inc. v. Purple Bucquet, NAF Case No. 1007001334349. These previous decisions indicate a pattern of conduct on the part of the Respondent and indicate that the disputed domain name has also been registered and used in bad faith.
Accordingly the Panel finds that the Complainant has established element under paragraph 4(a)(iii) of the Policy. 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 domain name be transferred to the Complainant.
David Stone
Sole Panelist
Dated: March 8, 2011
Full & Egal Universal Law Academy