The Complainant is Munch’s Supply LLC, United States of America (“United States”), represented by Benesch, Friedlander, Coplan & Aronoff, LLP, United States.
The Respondent is Shao Luo, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2020, 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 July 1, 2020, 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 amendment to the Complaint on July 9, 2020. The Center verified that the Complaint together with the amendment to 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 July 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020. The Center appointed Antony Gold as the sole panelist in this matter on August 26, 2020. 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 a distributor of heating, ventilation and air conditioning equipment, parts and supplies serving areas in Chicago, Northwest Indiana and Michigan, United States. It was founded in 1956 and now supplies its customers with a range of products from more than 100 different manufacturers. The Complainant operates an e-commerce website at “www.munchsupply.com” through which its goods and services can be purchased. Each page of the Complainant’s website features a blue, diamond-shaped logo, superimposed over a grey rectangle, which contains, in white font, the words “MUNCH’S SUPPLY, EST. 1956”. The Complainant trades as MUNCH’S SUPPLY and has registered the following service marks to protect its trading styles, namely; - United States service mark registration number 5,011,166 for the word mark MUNCH’S SUPPLY in class 35, registered on August 2, 2016; and - United States service mark, registration number, 5,055,829 for the Complainant’s logo, as described above, in class 35, registered on October 4, 2016. The disputed domain name was registered on May 30, 2020. The Complainant has provided screenshots of the Respondent’s website, the home page of which features, in the top left corner, a logo which is essentially identical to that used by the Complainant on its website. There are two minor differences in the textual element of the parties’ logos, namely the Respondent’s logo lacks the apostrophe in the word “munch’s” (i.e. it is presented as MUNCH S) and the word “outlets” has been used instead of the word “supply”. The Respondent’s website purports to sell manual and power tools for a variety of different applications. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is confusingly similar to its MUNCH’S SUPPLY service mark and that the similarity is amplified by the Respondent’s intentional use of the Complainant’s logo on its website. Moreover, a finding of bad faith may support a finding of confusing similarity; see AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin,WIPO Case No. D2001-1503. This makes sense because the Respondent appears to have selected the disputed domain name solely because it might divert web traffic that was intended for the Complainant or it might give the impression that the Respondent was somehow sponsored by, or endorsed or affiliated with, the Complainant. The Complainant says that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent does not own any registered trade marks containing MUNCH’S or any similar term. The Respondent is not commonly known by the word “munch’s” or by the disputed domain name. Nor has the Respondent made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Finally, the Respondent is not licensed, and does not have authorization to use, the name MUNCH’s or a confusingly similar version of it. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent’s bad faith is evidenced by the fact that, with actual knowledge of the Complainant’s trade mark rights, the Respondent is disrupting the Complainant’s business and creating confusion among consumers as to the association, sponsorship and/or endorsement of the Respondent’s brand. In addition, the Respondent is trading upon the goodwill of the Complainant’s mark to sell its low-cost products. The Respondent’s bad faith is evident from the Respondent’s use of the Complainant’s logo, which has already deceived, or which is likely to deceive, customers of the Complainant. There is no plausible, legitimate reason for the Respondent’s choice of disputed domain name and it is clear that the facts support a finding of bad faith. See, for example, Edmunds.com, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319, where the panel held that the registration and use of a domain name to redirect Internet users to websites of competing organisations constituted bad faith registration and use under the Policy. The only conceivable purpose of the Respondent’s actions is to confuse the Complainant’s customers so that the Respondent can profit from a wrongful association with the Complainant. Such conduct constitutes bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed 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 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 has provided details of both its registered United States service mark for MUNCH’S SUPPLY and its logo mark. These establish its rights in MUNCH’S SUPPLY. As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.store” in this case, is typically disregarded when making the comparison between a complainant’s mark and the disputed domain name. Note that this is the position under the first element even if the gTLD has a meaning which might reinforce a particular interpretation of the disputed domain name; see section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). There are two differences between the Complainant’s MUNCH’S SUPPLY service mark and the disputed domain name. The first is the lack of the apostrophe in the disputed domain name. This has no significance as, for technical reasons, an apostrophe cannot be represented in the Domain Name System. The second is the omission from the disputed domain name of the dictionary word “supply”. Neither of these differences prevents the disputed domain name from being found to be confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The distinctive MUNCH’S component of the Complainant’s mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. The screen prints of the Respondent’s website provided by the Complainant show that the layout and content of the Parties’ websites is not identical. Nor is the Respondent’s website purporting to sell the same goods and services as those sold by the Complainant. However, there is some commonality in the Parties’ products to the extent that mechanical products such as air conditioning will be installed and maintained using tooling. Moreover, the fact that the Respondent has used the Complainant’s distinctive logo on its website reinforces the impression that there is some connection between the Parties and is likely to suggest to Internet users aware of the Complainant who visit the Respondent’s website that they have reached the Complainant’s website or a website operated with its authority or associated with it in some way. The screen prints of the Respondent’s website provided by the Complainant suggest that it might have been in the course of development as at the date they were taken. One page, for example, is headed “Text Columns With Images” and there are numerous typographical errors. In these circumstances it can be of assistance to a UDRP panel to visit a respondent’s website to ascertain its current form. Section 4.8 of WIPO Overview 3.0 explains that “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”. The Panel has accordingly visited the website to which the disputed domain name resolves and notes that, whilst it still purports to sell tooling, some minor changes have been introduced. Most notably, the Respondent has ceased its use of the Complainant’s distinctive diamond logo. However, the fact that the Respondent has done this does not change the Panel’s assessment. First, the fact that the Respondent has previously chosen to use the Complainant’s logo in order to reinforce the suggestion of a connection with the Complainant creates a significant risk that it will do so again. Second, a brief tour around the Respondent’s new website suggests it is most likely a sham, intended to create the illusion of a live, transactional website but with no substance behind it, which has been created by the Respondent with the intent of making it more difficult for the Complainant to recover the disputed domain name. In particular, the stray section headed “Text Columns With Inches” is still present and there remain numerous typographical errors, which suggest the website has not been assembled with any intention of it comprising a genuine, customer-facing website. Furthermore, clicking on the Facebook, Instagram and Twitter social media buttons do not take the Internet user to social media accounts hosted by the Respondent. Finally, no details are disclosed as to the Respondent’s physical location or the actual legal entity operating the website. The address of a United Kingdom limited company with no evident connection to the Respondent is shown on the Returns Information but it is stated that “This is not a returning address”. For these reasons, the Panel considers that the Respondent’s website does not comprise a bona fide offering of goods and services. The second and third circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character. The Complainant has therefore made out a prima facie case under the second element and the burden of production shifts to the Respondent. In view of the failure of the Respondent to provide a response to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Dealing first, with bad faith registration, the use to which the Respondent has put the disputed domain name since on, or very shortly after, the date of registration, in particular its use of the Complainant’s logo in connection with services which are capable of being associated with the Complainant points to an awareness by the Respondent of the Complainant as at the date of registration of the disputed domain name. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. See also section 3.1.4 of the WIPO Overview 3.0; “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. The Panel accordingly finds the registration of the disputed domain name to have been in bad faith. Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within these circumstances in that the Respondent’s website, in its original form, was capable of leading many Internet users to believe that it was operated by, or with the authorization of, the Complainant. The belief of Internet users that they had found the Complainant’s website, or a website associated with it, will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s MUNCH’S SUPPLY service mark. This similarity is compounded because Internet users will associate the gTLD of the disputed domain name, “.store”, with the Complainant. The more recent form of the Respondent’s website is equally problematic for the reasons outlined above. Whilst the Respondent is evidently hoping to profit unfairly in some way from its registration of the disputed domain name and the creation of a dummy website, it is not necessary for the Panel to ascribe a precise motive to it. As explained at section 3.1.1 of the WIPO Overview 3.0; “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent”. The circumstances point clearly to bad faith intent on the part of the Respondent and the Panel therefore finds that the disputed domain name was both registered and 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 disputed domain name Antony Gold
Sole Panelist
Date: September 9, 2020
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