DECISION

McLaughlin Gormley King Company v. NA a/k/a Domain Administrator

Claim Number: FA0301000139716

PARTIES

Complainant is McLaughlin Gormley King Company, Golden Valley, MN (“Complainant”) represented by Stephen R. Baird, of Fish & Richardson P.C., P.A.  Respondent is NA a/k/a Domain Administrator, LIC, NY (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mgk.net>, registered with ENOM, INC.

PANEL

The undersigned, David P. Miranda, Esq. 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 2, 2003; the Forum received a hard copy of the Complaint on January 3, 2003.

On January 3, 2003, ENOM, INC. confirmed by e-mail to the Forum that the domain name <mgk.net> is registered with ENOM, INC. and that the Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 January 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2003 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@mgk.net by e-mail.

A timely Response was received and determined to be complete on January 28, 2003.

Complainant’s additional submission was received on February 3, 2003 and Respondent’s additional submission was received on February 10, 2003.  All submissions were received in a timely manner in accordance with the Forum’s Supplemental Rule #7 and were considered for the purposes of this decision.

On February 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name <mgk.net> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is a chemical company doing business in the United States for over one hundred years.  In 1957, Complainant obtained a trademark registration for the mark MGK, indicating a date of first use dating back to 1920.  Since then, Complainant has obtained five additional federal trademark registrations consisting of or containing the letter combination MGK.  Complainant contends that the domain at issue, <mgk.net> is identical to its registered trademarks.  Complainant further contends that Respondent has no rights or legitimate interest in the <mgk.net> domain, and it is not using the domain for a bona fide offering of goods or services, is not known by the letters mgk, has no intellectual property rights to mgk and has no legitimate interests in the domain name.  Complainant contends that Respondent has registered and used the <mgk.net> domain name in bad faith because Respondent had constructive notice of Complainant’s federal trademark registrations for the MGK mark, Respondent has failed to provide complete and accurate information to the Registrar of the domain name, and has provided no organization name, no individual name, no telephone number, no fax number or email address, and in the space allotted for secondary address, Respondent entered the words “domain available for sale”.  After Respondent received notification of this proceeding, it made an attempt to correct the contact information.  In addition, Complainant contends that Respondent’s registration and use of the domain name is in bad faith because Respondent solicits offers to sell the domain name for more than $1,000, an amount in excess of its out-of-pocket costs.

B. Respondent

Respondent stipulates that the disputed domain is identical to Complainant’s trademark.  Respondent contends that it has a legitimate business interest in the disputed domain name because of its use to promote various web sites it operates and generates advertising revenue.  Respondent also contends that it did not register the domain name with knowledge of Complainant’s trademarks, but rather chose the domain because the three letter combination sounds like the word “magic”.  The Respondent further contends that the three letter combination mgk is a common term with substantial third party use.

C. Additional Submissions

An additional submission of Complainant contends that Respondent has engaged in a pattern of cybersquating activity by registering domain names that incorporate the famous trademarks of others.  Complainant contends that Respondent has attempted to hide this pattern of cybersquating activity by providing false and incomplete contact information in its domain name registrations.  Complainant further contends that Respondent providing links to third party web sites and offering the domain name for sale to the general public is not a bona fide offering of goods or services.

Respondent submits an additional submission in which it does not dispute ownership of various domain names cited by Complainant, but rather contends that its registration and use of domain names containing the trademarks of others is permissible.  However, Respondent provides no proof that any of the trademark holders identified have authorized Respondent’s use.  Respondent further admits that it provided incorrect contact information to the Registrant for the purposes of sheltering its personal identity.

FINDINGS

Complainant has established that the domain name <mgk.net> is identical to its federally registered trademarks, Respondent has no rights or legitimate interests in <mgk.net> and that Respondent’s registration and use of the domain name is in bad faith, thus warranting transfer of <mgk.net> to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(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

Respondent stipulates that the domain name <mgk.net> is identical to Complainant’s trademarks.

Rights or Legitimate Interests

Complainant contends that as of January 2, 2003 the <mgk.net> domain name directed visitors to a website that merely offered the domain name registration for sale for $1,000.  Respondent’s offering of the <mgk.net> domain name for sale does not confer rights or legitimate interests in Respondent’s favor.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); Such conduct is evidence of Respondent’s bad faith.  Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Complainant asserts that Respondent placed links to third-party websites on the website that solicits the sale of the registration rights in the <mgk.net> domain name, which Respondent presumably profits from.  Such use does not represent rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Finally, Respondent has no rights or legitimate interests in the <mgk.net> domain name because it is not commonly known by the domain name.  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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).  Respondent’s claim that it registered mgk.net because “mgk” sounds like “magic” is “more amusing than credible.”  Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., [2000] USCA2 33; 202 F.3d 489, 499 (2d Cir. 2000) (rejecting contention that <sportys.com> domain name was a derivation of the registrant’s childhood dog “Spotty”).

Registration and Use in Bad Faith

Complainant contends that Respondent had constructive knowledge of Complainant’s interests in the MGK mark because the mark is registered on the Principal Register of United States Patent and Trademark Office.  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 Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Respondent’s offer to sell the <mgk.net> domain name registration for $1,000 represents bad faith pursuant to Policy ¶ 4(a)(i).  See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).  Respondent’s refusal to sell the domain name to the Complainant is not sufficient to rebut proof of its solicitations to the general public.

Respondent failed to provide complete and accurate WHOIS information, including organization name or individual name and no telephone, fax or email information.  The contact information that Respondent provided was an email address under the administrative and technical contact heading, and the notation “domain available for sale.”  Incomplete, false or misleading WHOIS information is evidence of bad faith.  See Video Direct Distrib. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name); see also Quixtar Inv., Inc. v. Smithberger & QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith); see also Amherst LLC d/b/a Amherst Corp. Sales & Solutions v. IFC Corp, FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding bad faith because Respondent used a fictitious corporate front when registering the domain name and continued to evade identification through use of inaccurate contact information).

Finally, Respondent has a history of registering domain names reflecting well-known trademarks, such as, inter alia, STAR WARS, TOYOTA, HONDA, VOLVO, CHEVROLET, and JEEP.  This is further evidence of Respondent’s bad faith.  See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

DECISION

The panel determines that the domain name <mgk.net> shall be transferred to Complainant.  The Respondent Domain Administrator and Jerry Stevens and Registrar ENOM are ordered and directed to transfer <mgk.net> to Complainant McLaughlin, Gormley, King Company.

David P. Miranda, Esq., Panelist
Dated: February 26, 2003

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