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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC.

Case No. D2006-0550

 

1. The Parties

The Complainant is MBI, Inc., Norwalk, Connecticut, United States of America, represented by Venable, LLP, United States of America.

The Respondent is Moniker Privacy Services/Nevis Domains LLC., “Charlestown, Nevis, KN”.

 

2. The Domain Name and Registrar

The disputed domain name <thedanburymint.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2006. On May 2, 2006, the Center transmitted by email to Moniker Online Services, LLC its first of six requests for registrar verification in connection with the domain name at issue. On May 12, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 18, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2006.

The Center appointed Angela Fox, as Sole Panelist in this matter on June 22, 2006. The Panel finds that it was properly constituted. The Panelist 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 leading producer of collectibles in the United States. It is licensed to produce collectibles and miniatures incorporating the famous brand names and trademarks of well-known companies including Pillsbury, Walt Disney, the National Football League, Ford, Coca-Cola, and many others. In the course of its business, the Complainant has used THE DANBURY MINT as a business name and trademark for nearly 40 years.

THE DANBURY MINT is registered as United States trademark nos. 2706302 and 0917352 filed in 1969 and 2001.

The contested domain name was registered on October 10, 2004. It links to a website bearing the banner, “Welcome to thedanburymint.com.” The site has no independent content, but rather provides links to what appear to be third-party commercial sites grouped under headings such as “Diecast Collectibles,” “Dolls Collectibles,” “Collectibles,” and “Antique Collectable Plates.” It also claims to offer “resources and information on Jewelry and Danbury Mint.” However, no information on The Danbury Mint is displayed when the link is accessed.

On February 24, 2006, the Complainant sent an email from its Corporate Controller to the domain name registrar, Moniker Online Services LLC, offering Ј410 for the transfer of the domain name. On March 27, 2006, Moniker replied in the following terms:

“These domains [sic] have actually been recently sold.

Please be advised that the current owner of the domain names is not really interested in selling the names.

However, if you wish to pursue the purchase of the domains, we can forward offers $25,000.00 USD or higher, per domain name, to the current owner to determine if they want to consider the offer.”

On March 28, 2006, the Complainant replied formally by email, stating that it owned several registered trademarks in the U.S. for THE DANBURY MINT and asking that Moniker pass on the Complainant’s demand that the Respondent immediately cease use of the domain name and transfer it to the Complainant.

On May 1, 2006, the Complainant filed this Complaint.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the contested domain name is identical to its prior registered trademark, THE DANBURY MINT. The Complainant moreover asserts that as a result of its extensive use of and reputation in THE DANBURY MINT, the Respondent’s use of the contested domain name is likely to give rise to confusion as to an association or affiliation between the Complainant and the Respondent.

According to the Complainant, the Respondent has no rights or legitimate interests in the contested domain name. The Respondent does not have, and has never had, any connection with the Complainant, does not deal in the Complainant’s products, and is not a licensee of the Complainant.

Finally, the Complainant contends that the Respondent registered and is using the contested domain in bad faith. Attempts to contact the Respondent via its registrar, Moniker, resulted in an implied demand for no less than $25,000 for the disputed domain name.

Moreover, the Respondent is operating a paid “link farm” service, which seeks to capture individuals looking for DANBURY MINT products or the Complainant’s own website and re-direct them to other, unrelated commercial sites. The Complainant avers that such activities do not amount to a bona fide offering of goods or services. It further asserts that the Respondent acquired the domain name primarily for the purpose of diverting the Complainant’s customers to the Respondent’s site for commercial gain, by creating a misleading impression of an association between the contested domain name and the Complainant.

B. Respondent

The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the 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 in or legitimate interests to the domain name;

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved to the Panel’s satisfaction that it owns registered trademarks in the United States for THE DANBURY MINT.

The contested domain name incorporates the whole of the Complainant’s trademark, the only difference being the presence of the non-distinctive domain name suffix, “.com,” which can be disregarded.

The Panel finds that the contested domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not disputed the facts as presented by the Complainant, and there is no evidence on the record to suggest the Respondent has any rights or legitimate interests with regard to the contested domain name.

The Panel notes that the Respondent has linked the domain name to a website offering links to third-party commercial websites grouped under a variety of headings, many of which relate to the Complainant’s field of business, “collectibles.” The website lacks any independent content of its own, and misleadingly indicates that it offers “resources and information” on the Complainant or its products, when in fact it does not. Use of the domain name in connection with such a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.

Other panels have found that the operation of commercial link services of this type, designed to lure Internet users and divert them to other commercial sites by the use of domain names identical or similar to a complainant’s trademark, do not confer a legitimate right to or interest in a domain name. The Panel draws support, in particular, from Deloitte Touche Tohmatsu v. Henry Chan (WIPO Case No. D2003-0584), Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi (WIPO Case No. D2004-0984), and Bridgestone Corporation v. Horoshiy, Inc. (WIPO Case No. D2004-0795).

There is no evidence before the Panel to suggest that the Respondent is commonly known by the domain name or is making a legitimate or non-commercial use of the domain name.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the contested domain name. The Respondent has not rebutted that case. Thus, the Panel finds the second element of the Policy established.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, it shall be evidence of registration and use in bad faith if the Respondent has intentionally attempted “to attract, for commercial gain, internet users to [his/her] 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 [his/her] website or location.”

The Panel finds such conduct on the part of the Respondent in this case. The contested domain name is identical to the Complainant’s trademark and is inherently likely to attract Internet users seeking the Complainant or the Complainant’s products. The fact that the Respondent uses the contested domain name to advertise links relating to “collectibles,” which are the Complainant’s business, indicates that the Respondent was in all probability not only aware of the inherent likelihood that the domain name would attract individuals seeking information on the Complainant or its products, but sought to capitalize on the expectations of those Internet users by directing them to other commercial sites offering similar products. The Respondent has not disputed the Complainant’s contention that the Respondent’s use of its site as a “link farm” of this nature is a commercial enterprise designed to create revenue for the Respondent.

The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website linked to the contested domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Other panels have reached similar conclusions concerning such commercial link farm services. In particular, the Panel notes the decisions in Deloitte Touche Tohmatsu v. Henry Chan (WIPO Case No. D2003-0584), Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi (WIPO Case No. D2004-0984), and Bridgestone Corporation v. Horoshiy, Inc. (WIPO Case No. D2004-0795) referred to above.

In light of this finding, it is not necessary for the Panel to consider whether the invitation to the Complainant to make an offer of $25,000 or more for the disputed domain name also justifies a finding of registration and use in bad faith under paragraph 4(b)(i) of the Policy.

The Panel finds that the Respondent registered and is using the contested domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <thedanburymint.com> be transferred to the Complainant.

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Angela Fox
Sole Panelist

Dated: July 2, 2006