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#Molemax : How a 2012 trademark beat a 2005 #domain registration in a #UDRP?

Molemax.com, a domain registered in 2005, was just lost via the UDRP process.

What’s strange, is that the Complainant’s trademark for MOLEMAX bears a 2012 registration date. In other words, the domain name is 7 years senior to the mark.

The two dates aren’t hidden, they were listed by the WIPO panelist:

  • The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,208,125, registered September 18, 2012
  • The disputed domain name was registered on May 2, 2005

The panelist went on to elaborate on this discrepancy:

The Complaint does not establish common law trademark rights from a time earlier than the trademark registration.  Nevertheless, the Complaint asserts continuous use of the trademark since June 30, 2003.  There is no supporting evidence for that claim in the form of physical material, nor any declaration to that effect from an office holder of Complainant company.  Instead, the Panel observes that June 30, 2003 is the first-use-in-commerce date given in USPTO Registration No. 4,208,125 and has formed the opinion that this was the only foundation for the claim to earlier use made in the Complaint.

In other words, the National Arbitration Forum panelist did not rely on evidence or a declaration even by the Complainant regarding the prior date of 2003 – they extracted it from the trademark’s registration process.

This is why, when hit with a UDRP, a domain registrant needs to not only respond, but to also utilize the services of a well-qualified attorney, expert in IP law and domain name litigation. We’d recommend the services of ESQwire.com, that are well established in the domain industry. Note: ESQwire is an advertiser on this publication.

Final decision: transfer the domain Molemax.com to the Complainant. Full details follow.

Bonide Products, LLC v. Domain Admin / Hush Whois Protection Ltd.

Claim Number: FA1912001876366

PARTIES

Complainant is Bonide Products, LLC (“Complainant”), represented by Thomas L. Sica of HESLIN ROTHENBERG FARLEY & MESITI P.C., United States. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <molemax.com> registered with Key-Systems GmbH.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Debrett G. Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 23, 2019; the Forum received payment on December 23, 2019.

On December 27, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <molemax.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@molemax.com. Also on December 31, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On January 25, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights in MOLEMAX and alleges that the disputed domain name is confusingly similar to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1. Complainant manufactures and sells pesticides by reference to the trademark MOLEMAX;

2. The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,208,125, registered September 18, 2012;

3. the disputed domain name was registered on May 2, 2005;

4. the domain name is for sale and currently resolves to a webpage with links to goods that compete with those sold under the trademark; and

5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[i]

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Complainant provides evidence of a USPTO registration for the trademark but not one in the name of Complainant. There is no explanation of the relationship, if any, between the trademark owner and Complainant.

Another panel may have denied the Complainant at this point. However, absent a Response, the Panel finds that in view of the similarity of the names, the entities are either related companies or one is the legal successor-in-title to the other of the trademark. Accordingly, the Panel finds that Complainant has rights in the trademark.

The domain name takes the trademark and add non-distinctive matter in the form of the generic “.com” gTLD. The Panel finds the disputed domain name to be identical to the trademark for the purposes of paragraph 4(a)(i) of the Policy.

The Panel accordingly finds that Complainant has established the first element of the Policy. That said, the Panel notes here that the disputed domain name was first registered more than seven years before the trademark was registered. Once more the Complaint is silent on this matter but for the unsupported claim that “since at least as early as June 30, 2003, [Complainant] has continuously used and promoted the [trade]mark”. In any event, this question of competing priorities is a matter for the other elements of the Policy to which the Panel turns now.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]

The publicly available WHOIS information for the domain name does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The domain name is for sale and currently is used only to link to other sites for competitive goods. The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use under paragraph 4(c)(i) or (iii) of the Policy.[iv]

The onus shifts to Respondent to establish a legitimate interest in the domain name. Without the benefit of a Response, that prima facie case is unlikely to be rebutted but the Panel has observed that the domain name was registered well before the trademark.

The Complaint does not establish common law trademark rights from a time earlier than the trademark registration. Nevertheless, the Complaint asserts continuous use of the trademark since June 30, 2003. There is no supporting evidence for that claim in the form of physical material, nor any declaration to that effect from an office holder of Complainant company. Instead, the Panel observes that June 30, 2003 is the first-use-in-commerce date given in USPTO Registration No. 4,208,125 and has formed the opinion that this was the only foundation for the claim to earlier use made in the Complaint.

Nonetheless, although this issue of priority re-emerges under the following element of bad faith, for present purposes there is nothing in Respondent’s actions which shows a right or legitimate interest in the domain name. It is for sale and it – whether by Respondent’s direct action or via auto-generated algorithm – has been used to redirect Internet users looking for Complainant’s products to potential competitors of Complainant through third party links promoted at the resolving webpage.

The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.

From what has gone before it is clear that an issue arises as to whether or not the domain name was registered in bad faith. It was registered two years after Complainant’s asserted first use but seven years before Complainant obtained trademark registration. Aside from the first use claim of the USPTO registration, there is no corroborating evidence of use of the trademark prior to registration of the domain name. It is therefore questionable whether the domain name could have been registered in bad faith.

Complainant asserts that Respondent has been named in a number of UDRP proceedings but that may be inconclusive if the named Respondent in these proceedings is simply that of a privacy service. All that Panel can decide is that the issue of bad faith registration is moot.

Further guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Panel finds that paragraph 4(b)(iv) has direct application. It is the only one of the four scenarios which hinges on use rather than registration. In terms of its requirements, the Panel has already found the trademark and domain name to be identical. Confusion is therefore inevitable. Further, the Panel finds that the resolving website exists for commercial gain in some form or another, either by way of sale, click-through royalty fees, or similar. In terms of the Policy, the Panel finds that Respondent has intended to create the requisite confusion described by paragraph 4(b)(iv).

The Panel finds registration and use in bad faith[v] and so finds that Complainant has satisfied the third and final element of the Policy.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <molemax.com> domain name be TRANSFERRED from Respondent to Complainant.

Debrett G. Lyons, Panelist

Date: January 30, 2020


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