DECISION

Menard, Inc. d/b/a Menards v. James Soldat

Claim Number: FA0206000114520

PARTIES

Complainant is Menard, Inc., d/b/a Menards, Eau Claire, WI (“Complainant”) represented by Stephen R. Baird, of Fish & Richardson P.C.  Respondent is James Soldat, Chicago, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <menardsstores.com>, registered with Network Solutions.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 7, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.

On June 10, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <menardsstores.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@menardsstores.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.”  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

1. Respondent’s <menardsstores.com> domain name is confusingly similar to Complainant’s registered MENARDS mark.

2. Respondent does not have any rights or legitimate interests in the <menardsstores.com> domain name.

3. Respondent registered and used the <menardsstores.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns nine registered trademarks and service marks listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”), specifically, Reg. No. 2,191,048 registered on September 22, 1998 and Reg. No. 2,195,879 registered on October 13, 1998.

Complainant has operated under its MENARDS mark for more than twenty years throughout the Midwest. According to <forbes.com>, Complainant is the twenty-fifth largest privately held company in the U.S. and the third largest retail home improvement store chain in the U.S. Complainant currently operates over 160 retail stores in states throughout the Midwest, including Respondent’s domicile, Illinois. Complainant also operates from its <menards.com> registered domain name.

Respondent registered <menardsstores.com> on January 3, 2000. Complainant’s investigation has revealed that Respondent has never actively used the disputed domain name in conjunction with a developed website or stated purpose. Complainant’s communications with Respondent provide evidence that Respondent alleges he derived the <menardsstores.com> domain name from a combination of the word “stores” and a representation of the following acronym: MEN, Active, Responsive, Designer and Styles (MENARDS).

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established rights in the MENARDS mark through registration with the USPTO and subsequent continuous use.

Respondent’s <menardsstores.com> domain name is confusingly similar to Complainant’s MENARDS mark. Respondent’s infringing domain name wholly incorporates Complainant’s MENARDS mark while adding the generic term “stores.” The addition of a generic, albeit industry-related, term does not detract from the dominating presence of Complainant’s MENARDS mark. Furthermore, the addition of a generic term that describes services associated with Complainant’s mark is likely to cause confusion among Internet users and Complainant’s potential customers. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <menardsstores.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent has passively held <menardsstores.com> since January 3, 2000 without demonstrating a purpose or developing a website in conjunction with the domain name. Nearly two and a half years represents a sufficient amount of time for Respondent to provide evidence of demonstrable preparations to use the domain name. Respondent’s passive holding of the domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial use of the domain name under Policy ¶ 4(c)(iii). See  Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).

There is no evidence that suggests Respondent is commonly known by the <menardsstores.com> domain name notwithstanding Respondent’s alleged acronym as stated in the Findings. There is no apparent connection between Respondent and the MENARDS mark, and Respondent has failed to produce evidence suggesting otherwise. Because Complainant’s MENARDS mark is well-known and established in the Midwest, including Respondent’s domicile, there is a presumption that Respondent does not have rights or legitimate interests in a domain name that incorporates Complainant’s famous MENARDS mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The criterion specified in ¶ 4(b) of the Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Complainant owns various registrations on the Principal Register of the USPTO and has a presence in Respondent’s state, Illinois. Hence, Respondent had constructive notice of Complainant’s rights in its MENARDS mark prior to registering the disputed domain name. Knowledge of a Complainant’s trademark rights prior to registering the domain name indicates bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent’s passive holding of the disputed domain name allows an inference that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated: July 24, 2002.

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