The Complainant is Mag Instrument, Inc. of Ontario, California, United States of America, represented by Jones Day, United States of America.
The Respondent is Richard Larkins Sets&Reps of Aberdeen, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, 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, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (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 18, 2013. On January 24, 30 and 31, 2013, the Center received several communications from the Respondent by email. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent made several email communications to the Centre on January 24, 2013, January 30 2013 and January 31, 2013 but did not submit any formal response by the specified due date.
The Center appointed Alistair Payne as the sole panelist in this matter on February 19, 2013. 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 United States based manufacturer of lighting products and owns the well reputed MAGLITE brand and trade mark which has been registered since 1981 in various forms and in numerous countries. In particular the Complainant owns trade mark registration number 2485515 in the United States for the word mark MAGLITE in connection with flashlights and other goods in class 11 registered in September 2001. It has also owned CTM 18721 for MAG-LITE since 1999. The Complainant owns a number of domain name registrations including , , , , and has for many years operated its main website for its products from a website at “www.”.
The disputed domain name was registered on April 23, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that its MAGLITE brand and mark is a distinctive coined term that has subsequently given rise to a family of MAG product marks. It has submitted evidence concerning the substantial degree of renown attaching to the mark arising from over USD 1 billion in product sales and millions of dollars in advertising for its MAG family of products. It submits that the disputed domain name is identical to its registered MAGLITE trade mark.
On April 24, 2012, the Complainant became aware of the Respondent’s registration of the disputed domain name, only one day after the Respondent had registered the disputed domain name, when the Respondent contacted the Complainant through its website to advise that he was going to auction off the disputed domain name but first wished to offer to sell the disputed domain name. Various correspondence transpired between the parties in which in essence the Respondent asserted that he was a professional domain name broker and had no intention of infringing the Complainant’s trade mark rights but sought to recover his time and costs in registering the disputed domain name. The Complainant responded through its legal advisors requiring that the Respondent transfer the disputed domain name on the basis that the Respondent’s use of the disputed domain name to resolve to a sponsored listing page infringed the Complainant’s trade mark rights. The Respondent did not respond to the Complainant’s counsel’s last two communications.
The Complainant submits that the Respondent has not been authorized or licensed by the Complainant to use its MAGLITE mark and is not commonly known by that mark. Nor says the Complainant is there any evidence that the Respondent is making a bona fide offering of goods or services or a legitimate fair or non-commercial use the MAGLITE mark through the disputed domain name.
The Complainant submits that based on the degree of repute attaching to the MAGLITE mark, the Respondent must have known of the Complainant’s rights before registering the disputed domain name and the fact that the Respondent approached the Complainant to sell the disputed domain name one day after its registration points to registration in bad faith. As far as use is concerned, the Complainant submits that the Respondent’s use of the disputed domain name to resolve to a pay-per-click parking site with links to competing products is evidence of use in bad faith.
The Complainant also notes that the Respondent has a past history of cybersquatting. In a recent decision LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024, the panel ordered that a number of domain names incorporating the LEGO trademark should be transferred to the complainant after it was found that the Respondent had no rights or legitimate interests in the domain names and had registered and used them in bad faith. The Complainant also notes that the Respondent currently owns a number of domain names that incorporate third party trademarks, including, among others, and and submits that this pattern of cybersquatting is additional evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it owns registered trade marks in the MAGLITE mark, in particular under word mark registration 2485515 in the United States. The Panel further finds that the substantive element of the disputed domain name is identical to the Complainant’s MAGLITE mark.
As a result the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the circumstances of the degree of repute attaching to the Complainant’s MAGLITE mark from its very substantial use and considering the manner in which the Respondent sought to sell the disputed domain name to the Complainant immediately following its registration and in view of the discussion concerning bad faith below, the Panel find that there is no evidence to rebut the Complainant’s case under this head and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that its MAGLITE mark is a coined term and therefore highly distinctive. In view of this and also of the very substantial degree of renown attaching to the mark as a consequence of the significant sales and advertising and established use of the mark the Panel infers that the Respondent knew of the Complainant’s mark when he registered the disputed domain name. The fact that he chose to approach the Complainant with a view to sell the disputed domain name only one day after its registration is indicative of the Respondent’s intentions to profit from the transaction. The fact that negotiations never got so far as a discussion of price is neither here nor there as it is apparent from the circumstances that the Respondent sought to recover far more than merely his out-of-pocket bare registration costs. The Respondent’s apparent intention to re-sell the disputed domain name at a profit constitutes evidence of registration and use in bad faith under paragraph 4(b)(i) of the Policy. Registering a domain name with knowledge of a trade mark owner’s existing rights and with a blatant intention of making a profit on its sale by selling it back to the trade mark owner is clearly registration in bad faith and a case of classic cybersquatting.
Although linking the disputed domain name to a sponsored link page may not always be evidence of registration and use in bad faith, in the particular circumstances of this case and considering that the page features links to the Complainant’s competitors’ websites the Panel considers that this is also indicative of the Respondent’s registration and use of the disputed domain name in bad faith. The evidence provided by the Complainant of the Respondent’s previous history in this regard as set out in the decision in LEGO Juris A/S v. Richard Larkins Sets& Reps,WIPO Case No. D2012-1024 only serves to reinforce the Panel’s view that the use of the disputed domain name to resolve to a sponsored linking page in this case most likely provides the Respondent with pay-per-click revenue and is therefore evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds that the Complaint succeeds under the third limb of the Policy. 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.
Alistair Payne
Sole Panelist
Date: February 26, 2013
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