The Complainant is Master International Corporation of Santa Monica, California, United States of America (“United States”), represented by Fox, O’Neill & Shannon, S.C., United States.
The Respondent is Wykis World, Wykis-world of Ohta-Ku, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2018, 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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. On November 20, 2018, the Center received an email communication from a third party in relation to the present proceeding. The Respondent did not file a response. Accordingly, on December 3, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Jane Seager as the sole panelist in this matter on December 17, 2018. 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, founded in 1967, is a company incorporated in California, United States. The Complainant distributes electrical, electronic and electromechanical components for industrial, military, aerospace and consumer applications.
The Complainant is the owner of United States trademark MASTER ELECTRONICS, registration number 4,322,006, registered on April 16, 2013, used in connection with its electrical components distribution business.
The Complainant is also the owner of a United States design mark consisting of a blue circle with six white bands extending from the left side of the circle towards a converging point on the right side of the circle giving the impression of a globe or ball, registration number 5,209,202, registered on May 23, 2017.
The Complainant owns the domain name , from which it operates a commercial website offering its goods and services. The Complainant’s website prominently features the MASTER ELECTRONICS trademark, together with the Complainant’s design mark.
The Respondent registered the disputed domain name on February 12, 2018. The disputed domain name resolves to a website at “www.” (the “Respondent’s website”) where electronics such as computers, cameras, phones and tablets, televisions, gaming consoles and other goods are offered for sale. The Respondent’s website copies the look and feel of the Complainant’s website, displaying the Complainant’s MASTER ELECTRONICS trademark and design mark in the same position as on the Complainant’s website. The Respondent’s website also lists a physical contact address that corresponds to the Complainant’s warehouse in Oakland, California, United States.
On November 20, 2018, the Center received a communication from a third party who had received the Center’s Written Notice of the present proceeding. The third party disclaimed any involvement in the dispute between the Parties. 5. Parties’ Contentions A. Complainant
The Complainant asserts rights in the MASTER ELECTRONICS trademark, and further asserts that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent is not making a legitimate offering of goods via its website, and that its attempts to contact customer service have been “fruitless”. The Complainant asserts that the Respondent is not commonly known by the disputed domain name. The Complainant further states that the display of the Complainant’s trademark and physical address on the Respondent’s website demonstrates the Respondent’s intent to misleadingly divert consumers away from the Complainant’s website.
The Complainant asserts that the Respondent’s primary purpose for registering the disputed domain name was to disrupt the business of the Complainant. The Complainant further asserts that the use to which the disputed domain name has been put is intended to confuse consumers as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in its Complaint, the Complainant must prove on the balance of probabilities that it has satisfied the requirement of paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the MASTER ELECTRONICS trademark for the purposes of the Policy.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety together with the addition of “ltd”. Such an addition does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, the latter being clearly recognizable in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparison under the first element as it viewed as a standard requirement of registration. See WIPO Overview 3.0, section 1.11.1.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to evidence put forward by the Complainant, and as observed by the Panel’s own access to the website at the disputed domain name, the disputed domain name resolves to a website that copies the look and feel of the Complainant’s official website at “www.”. This is evidenced by the Respondent’s use of the same colour scheme as that which appears on the Complainant’s website and the prominent display of the Complainant’s MASTER ELECTRONICS trademark and design mark in the same position as on the Complainant’s website. While not identical, the Respondent also offers materially-similar electronic goods to those offered by the Complainant. In addition, the Respondent’s website lists a physical contact address that corresponds to that of the Complainant’s warehouse in Oakland, California, United States. There is nothing on the website to indicate that there is no relationship between the operator of the Respondent’s website and the Complainant, when in reality, the Complainant has never granted the Respondent any permission to use its trademark in a domain name or otherwise. The Complainant asserts that the Respondent is not even making a genuine offer of goods on its website as its attempts to contact customer service for the Respondent’s website have been “fruitless”.
Based on the above, the Panel finds that the Respondent has misappropriated the Complainant’s trademark in an attempt to impersonate the Complainant. In the circumstances, it is entirely plausible that there is no real offering of the goods advertised on the Respondent’s website, which may in fact be being used in an attempt to defraud unsuspecting Internet users. Even if the goods purported to be sold via the Respondent’s website are genuine, UDRP panels have categorically held that the use of a domain name for the purposes of impersonation can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.
The Panel notes that the Respondent has not come forward to contest the Complainant’s assertions, and further finds that none of the circumstances envisaged by paragraph 4(c) of the Policy applies.
In light of the foregoing, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that the Respondent registered the disputed domain name several years after the Complainant had obtained registered rights in the MASTER ELECTRONICS trademark. The use of the disputed domain name as outlined above indicates that the Respondent clearly had the Complainant and its trademark in mind, and registered the disputed domain name with the intention to mislead Internet users by impersonating the Complainant.
The use to which the disputed domain name has been put clearly indicates that the Respondent sought to create a likelihood of confusion with the Complainant for commercial gain by displaying the Complainant’s trademark, design mark and physical address on its website, and by purporting to sell materially-similar goods to those offered by the Complainant under its MASTER ELECTRONICS trademark. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel further finds that the Respondent’s failure to provide accurate contact information in the WhoIs information for the disputed domain name further evidences the Respondent’s bad faith.
For reasons set out above, the Panel finds that the Respondent registered and is using the disputed domain name 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 disputed domain name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: December 20, 2018
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