The Complainant is McKenzie Global Holdings Limited of Paraparaumu, New Zealand, represented by Zone Law Limited, New Zealand.
The Respondent is Paul Strube of Hilltop Lakes, Texas, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2017.
The Center appointed Gareth Dickson as the sole panelist in this matter on October 30, 2017. 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 Respondent is located in the United States.
The Domain Name was registered by the Respondent on August 9, 2011. The Domain Name comprises “mckenziemethod”, together with the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Complainant is based in New Zealand. Together with its related entities, it owns a number of trade mark applications and registrations in various jurisdictions for the mark MCKENZIE METHOD. This includes the United States trade mark MCKENZIE METHOD with registration number 2537537, which was applied for on May 18, 1998 and was registered on February 12, 2002, in class 42 for “physical therapy, namely, mechanical diagnosis and therapy for spinal disorders” (the “Trade Mark”).
The website to which the Domain Name resolves (the “Website”) formerly contained pay-per-click links relating to treatments for back pain and back injuries. These were all written in English.
The Domain Name did not resolve to an active website when the Complaint was filed. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Domain Name is identical to the Trade Mark and that the mark MCKENZIE METHOD has acquired an international reputation in the field of physical therapy and the treatment of musculoskeletal issues.
It further contends that the Respondent has never been commonly known by the Domain Name or sought to register a trade mark for MCKENZIE METHOD. It claims that the Respondent has not made a legitimate noncommercial or fair use of the Domain Name, since the only use to which the Domain Name has been put is to direct Internet users to a page comprising pay-per click links directed at services similar to those covered by the Trade Mark.
Finally, the Complainant argues that the Respondent must have known about the Complainant’s rights in MCKENZIE METHOD when it registered the Domain Name and that the Respondent’s use of the Domain Name to provide access to pay-per-click links in the past is evidence that the Domain Name is being used in bad faith. Moreover, it asserts that the non-use of the Domain Name does not prevent a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the Trade Mark. The Panel therefore finds that the Complainant has rights in the Trade Mark.
The Trade Mark is comprised exclusively of the words “mckenzie” and “method”. The Domain Name is comprised of the letters “mckenziemethod” together with the gTLD suffix “.com”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the gTLD suffix. That suffix does not distinguish the remainder of the Domain Name and will be overlooked by the average Internet user.
An English-speaking Internet user will identify the presence of the words “mckenzie” and “method” in the Domain Name, despite the absence of a space between them.
A comparison between the Domain Name and the Trade Mark therefore reveals that they are identical for the purposes of the Policy.
The Panel therefore finds that the Domain Name is identical to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant has established such a prima facie case here by stating that it has not authorized or consented to the registration or use of the Domain Name by the Respondent. It goes further by showing that the only active use of the Domain Name by the Respondent has been to provide access to pay-per-click links. Use of a domain name to provide access to pay-per-click advertisements “which compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”, as is the case with the Domain Name, is not a bona fide offering that amounts to a legitimate noncommercial or fair use of the Domain Name; and is therefore insufficient to establish rights or legitimate interests in respect of a domain name. See section 2.9 of the WIPO Overview 3.0.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Complainant has not substantiated its contentions that MCKENZIE METHOD is well known and that it has an international reputation. Nonetheless, the Panel accepts that the Respondent knew about the Complainant’s rights in MCKENZIE METHOD when it registered the Domain Name and that it had no intention at that time of making a legitimate noncommercial or fair use of it. This conclusion is derived from the evidence submitted by the Complainant in Annex 4 showing that the Respondent is a chiropractor and elsewhere uses email addresses with the domain names and , that other online content associated with the Respondent is directed at the MCKENZIE METHOD of treatment for back pain, that the Respondent has used the Domain Name for pay-per-click links only, and that the Respondent’s response to the imminent filing of this Complaint was to take the Domain Name offline. The Respondent has had ample opportunity in the six years since registering the Domain Name to demonstrate that the original registration had a legitimate purpose, but it has not done so.
The Panel finds that the Respondent’s passive holding of the Domain Name is a calculated attempt to keep control of the Domain Name with the Respondent rather than the Complainant and amounts to the Domain Name being used in bad faith. This conclusion is based on a number of factors, including the identity of the Domain Name and the Trade Mark, the Respondent’s lack of rights or legitimate interests in respect of the Domain Name, the Respondent’s registration of the Domain Name in bad faith, and the Respondent’s lack of engagement with the Complainant following its efforts to resolve this dispute amicably.
The Panel therefore finds that the Domain Name is being used in bad faith. 7. Decision
For 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.
Gareth Dickson
Sole Panelist
Date: November 13, 2017
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