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PC Mall, Inc. v. MacMaal.com PCMaal.com / Bhaskar Raghavan [2005] GENDND 290 (22 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PC Mall, Inc. v. MacMaal.com PCMaal.com / Bhaskar Raghavan

Case No. D2005-0268

1. The Parties

The Complainant is PC Mall, Inc., California, United States of America, represented by Morrison & Foerster, LLP, United States of America.

The Respondent is MacMaal.com PCMaal.com / Bhaskar Raghavan, Royal Palm Beach, Florida, United States of America.

2. The Domain Names and Registrar

The domain names at issue, <macmaal.com> and <pcmaal.com> (the “Disputed Domain Names”) are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2005. On the same day, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the domain names at issue. On March 15, 2005, Wild West Domains, Inc., transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of <pcmaal.com> and <macmaal.com>, and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 March 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 7, 2005. The Respondent submitted a Response to the Center on March 23, 2005.

The Center appointed D. Brian King as the Sole Panelist in this matter on April 8, 2005. The Panel finds that it was properly constituted. The Sole 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 facts relevant to current dispute are set out in the Complaint and the Response. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant, PC Mall, Inc., has sold consumer electronics and computer-related products and services since 1987, through advertisements in national magazines and catalogs, and since 1995, over the Internet through a variety of websites.

The Complainant, which is based in the United States, has registered MACMALL and PCMALL as trademarks with the United States Patent and Trademark Office as well as with the relevant authorities in several other countries. The United States registrations occurred years before the Respondent registered the Disputed Domain Names. The Complainant has also registered the domain names <macmall.com>, <mac-mall.com>, <pcmall.com>, and <pc-mall.com>, which it uses to offer the goods and services mentioned above.

The Complaint lists as the Respondents MacMaal.com and PCMaal.com, both of Pondicherry, India, and the Registrar confirmed that these two entities are the listed registrants of the respective Disputed Domain Names. It is not clear whether these Respondents are corporations or other legal entities, but, in the Response, Mr. Bhaskar Raghavan of Florida accepts that he controls them. For the sake of clarity, the Panel will refer to both the named Respondents and Mr. Raghavan collectively as the “Respondent”.

The Respondent registered the Disputed Domain Names <macmaal.com> and <pcmaal.com> on January 30, 2005. The Respondent established websites using the Disputed Domain Names to sell consumer electronic goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Names are confusingly similar to its MACMALL and PCMALL marks. See Policy, paragraph 4(a)(i). The Complainant notes that, aside from the “.com” TLD, each Disputed Domain Name merely adds an “A” in place of the first “L” in the MACMALL or PCMALL marks. The Complainant infers that the Respondent selected the Disputed Domain Names to capitalize on typographical errors by Internet users seeking the Complainant’s website. Citing prior cases, the Complainant argues that it is well-accepted that a domain name that merely adds a letter or makes similar small changes to a registered trademark is confusingly similar to the mark.

Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. See Policy, paragraph 4(a)(ii). Following on from its “typosquatting” contention, the Complainant contends that the Respondent is using the Disputed Domain Names to profit commercially by creating confusion with the Complainant’s marks. The Complainant argues that in accordance with previous decisions under the Policy, such behavior does not constitute a bona fide offering of goods or services, precluding the Respondent from claiming a legitimate interest under paragraph 4(c)(i) of the Policy. For similar reasons, according to the Complainant, the Respondent cannot take advantage of paragraph 4(c)(iii) of the Policy, which does not apply to a party who misleadingly diverts consumers for commercial gain. Finally, the Complainant claims, on information and belief, that the Respondent did not use the Disputed Domain Names in connection with any legitimate business or offering of goods or services prior to their registration. Again citing prior decisions under the Policy, the Complainant argues that the Respondent must be “commonly known” by the domain name before the moment of registration in order to satisfy paragraph 4(c)(ii) of the Policy.

Finally, the Complainant asserts that Disputed Domain Names were registered and are being used in bad faith. See Policy, paragraph 4(a)(iii). The Complainant specifically refers to paragraph 4(b)(iv) of the Policy and asserts that the Respondent is intentionally attempting to cause consumer confusion for the purpose of commercial gain. According to the Complainant, the Respondent’s use of domain names that consist of a misspelling of its MACMALL and PCMALL marks in connection with selling nearly identical goods is overwhelmingly likely to cause confusion. The Complainant argues that the Respondent’s websites will attract consumers seeking the Complainant’s websites, and it will also mislead consumers into believing that the Respondent’s websites are sponsored by, affiliated with or authorized by the Complainant. Both kinds of consumer confusion are said by the Complainant to be “clear evidence of bad faith”. Finally, the Complainant contends that the fact that the Respondent registered two domain names – both of which are “nearly identical and confusingly similar to the registered trademarks of the Complainant” – is further evidence of bad faith.

B. Respondent

First, the Respondent denies that the Complainant has valid rights in its MACMALL and PCMALL marks. See Policy, paragraph 4(a)(i). The Respondent says that each mark consists merely of two generic words, i.e., MAC and MALL, and PC and MALL. The Respondent claims that both MAC and PC are generic terms, as both are commonly used to refer generically to personal computers (although the Respondent does acknowledge that the word MAC designates in particular computers manufactured by Apple Computer, Inc.). Relying on a newspaper report of the decision in a lawsuit involving the Microsoft Corporation, the Respondent argues that the combination of two generic terms cannot form the basis for a valid trademark, and hence that the Complainant has no protected rights that can be vindicated under the Policy.

Continuing his argument concerning the first element of the Policy, the Respondent notes that he is Indian and explains (attaching an exhibit to substantiate the explanation) that “maal” is a Hindi word meaning, among other things, “property”. The Respondent says that “maal” can also have the meaning “treasure” in colloquial usage. Therefore, says the Respondent, he registered the Disputed Domain Names to convey the meanings “PC Treasure” and “MAC Treasure”. Thus, he continues, the Disputed Domain Names are not intentional misspellings of the Complainant’s marks but are rather entirely different terms with distinct meanings. Once this is understood, according to the Respondent, it is clear that the Disputed Domain Names are not confusingly similar to the Complainant’s marks. The Respondent points out that the Complainant has furnished no evidence of actual confusion among consumers.

Secondly, the Respondent asserts that he has legitimate interests in the Disputed Domain Names. The Respondent responds to the Complainant’s allegation that his offering of goods is not bona fide by saying that the Complainant has no exclusive license to sell the goods concerned, that the Respondent has an equal right to sell those goods, and that he is not intentionally trying to confuse consumers. Because he is using the Disputed Domain Names in connection with his purportedly bona fide offering of goods, the Respondent claims he has a legitimate interest in the Disputed Domain Names under paragraph 4(c)(i) of the Policy.

Thirdly, the Respondent contends that the Disputed Domain Names were not registered and used in bad faith. The Respondent argues that none of the particular indicia of bad faith enumerated in the Policy are present. See Policy, paragraph 4(b)(i-iv). First, the Respondent asserts that the Disputed Domain Names were registered to sell goods that he has a right to sell, and therefore were not acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. See Policy, paragraph 4(b)(i). Furthermore, the Respondent alleges that since the Complainant never showed interest in the Disputed Domain Names during the 16 years it has been in business, the Complainant commenced this proceeding in bad faith to disrupt the Respondent’s legitimate business. For this reason, the Respondent says, he cannot have registered the Disputed Domain Names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. See Policy, paragraph 4(b)(ii). Next, the Respondent repeats his claims that the Disputed Domain Names are not confusingly similar to the Complainant’s marks, that the Respondent has legitimate rights in the Disputed Domain Names and that the Disputed Domain Names have no relevance or relation to the Complainant’s marks. The Respondent asserts that these considerations prove that the Disputed Domain Names were not registered primarily for the purpose of disrupting the Complainant’s business. See Policy, paragraph 4(b)(iii). Finally, relying on the alleged use of the Hindi word “maal” in the Disputed Domain Names, the Respondent claims not to have created intentionally a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. See Policy, paragraph 4(b)(iv). In this connection, the Respondent notes that his websites do not claim that the Respondent is a distributor for the Complainant’s goods, nor indeed that he has any relationship with the Complainant at all.

The Respondent concludes by requesting the Panel to make a finding of reverse domain name hijacking. The Respondent argues that the Complainant has no legitimate rights in the Disputed Domain Names, that the Complainant’s marks are generic and invalid, that the Respondent has invested considerable money in promoting the Disputed Domain Names and that the Complainant’s purpose in commencing this proceeding is to disrupt his business.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

The Complainant bears the burden of proof on each of these elements, see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000), and they will be examined in turn below.

A. Identical or Confusingly Similar

A preliminary issue to be addressed here is whether the Complainant has protected rights in the marks MACMALL and PCMALL. Despite the Respondent’s claim that these marks are generic and hence invalid, the Panel has no difficulty in finding that the Complainant’s registration of those trademarks in the United States and elsewhere sufficiently demonstrates its rights in them. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503 (July 18, 2000).

Putting aside for the moment consideration of the Hindi meaning of the word “maal”, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s marks. The Disputed Domain Names differ from the Complainant’s marks by a change of one letter (and the addition of “.com”). Such small changes have regularly been found not to dispel likely confusion. See e.g., Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 (October 18, 2002) (<abeds.com> confusingly similar to <abed.com>). Here, the change of one letter is especially insignificant because it results in the doubling of one letter (“L”) being substituted by the doubling of the preceding letter in the same word (“A”). Not only does this result in words that most consumers would pronounce the same, but it also heightens the chance that Internet users would find their way to the Respondent’s websites through typographical errors.

The question, then, is whether this analysis is altered by the fact that “maal” is a Hindi word. The Panel answers this question in the negative. Both the Respondent and the Complainant operate businesses in the United States, using websites in the English language. The Respondent’s websites do not feature Hindi words, and nothing else in the record indicates that any significant proportion of the visitors to either party’s websites are familiar with Hindi. The Respondent does not deny the morphological near-identity between the Disputed Domain Names and the Complainant’s marks. The distinction that he posits is based entirely on the assumption that the Internet user knows the Hindi word “maal”. Indeed, the Respondent relies not on the meanings of “maal” given by an on-line Hindi-English dictionary page that he attaches as an exhibit to his Response; rather, he relies on a colloquial meaning that, from what appears in the record, may not even be accessible to a non-Hindi speaker using reference materials. Since there is no reason to believe that a majority, or even a significant minority, of consumers in the markets served by the parties are aware of the Hindi meaning of “maal”, the fact that “maal” does mean something in Hindi cannot make the Disputed Domain Names any less confusingly similar to the Complainant’s marks in the vast majority of cases.

As for the Respondent’s argument that there is no evidence of actual confusion, no such evidence is required under the Policy’s first element. Indeed, it has been persuasively argued that administrative proceedings under the Policy are not suited to examining evidence of actual confusion, as would a court in a trademark infringement case under Anglo-American law. See Bradford & Bingley plc v. Registrant info@fahionID 987654321, WIPO Case No. D2002-0499 (August 16, 2002).

For these reasons, the Panel finds that the Complainant has succeeded in establishing the first element required by the Policy.

B. Rights or Legitimate Interests

The second element, as framed by the parties’ arguments, turns on the question whether the Respondent’s offering of consumer electronics on his websites is bona fide within the meaning of paragraph 4(c)(i) of the Policy. The Panel finds that it is not. It is well-established that there is no legitimate interest in selling goods via a domain name that is confusingly similar to a trademark, when those goods compete with goods sold by the trademark’s owner. See Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (February 27, 2005) (collecting cases). The Respondent’s offering of products that are identical or substantially similar to the products offered by the Complainant cannot, therefore, be bona fide under paragraph 4(c)(i) of the Policy.

Furthermore, there is no evidence in the record suggesting that either of the other two circumstances identified in paragraph 4(c) of the Policy is present here.

The Panel therefore finds that the Complainant has established the second element required by the Policy.

C. Registered and Used in Bad Faith

The last element, like the second, turns on one particular subparagraph of the Policy: paragraph 4(b)(iv).

The Respondent argues at length that his conduct does not fall into any of the subparagraphs of the Policy other than paragraph 4(b)(iv). This is mostly unnecessary rebuttal, since the Complainant does not even mention paragraphs 4(b)(i) and 4(b)(iii) in the Complaint, and mentions paragraph 4(b)(ii) almost as an afterthought. The Complainant’s decision in the latter regard was wise, in the Panel’s view: the record does not support a finding that the Respondent has violated paragraph 4(b)(ii). Under that subparagraph, the Complainant must show that the Respondent registered the Disputed Domain Names in order to prevent the Complainant from reflecting its marks in corresponding domain names, and that the Respondent has engaged in a pattern of such conduct. This test is meant to describe the activities of the classic cybersquatter, who registers the names of many companies (adding a TLD) before his victims get around to doing so. The Complainant has not drawn the Panel’s attention to any evidence that the Respondent has ever registered any domain name other than the two at issue in this proceeding, let alone that he has done so to prevent trademark owners from registering them. Even if the Panel could conclude that the Respondent intended to preempt the Complainant from registering the Disputed Domain Names in this instance – a conclusion that would be suspect on this record – there is no basis for finding a meaningful pattern of such conduct.

Thus, the bad faith element comes down to paragraph 4(b)(iv) of the Policy:

“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent’s only contention in this respect is that paragraph 4(b)(iv) has not been established “[c]onsidering the difference in the underlying meaning between the Disputed Domain Names and the Complainant’s trademark explained in paragraph 5.2.2” of the Response (Response, paragraph 5.C.6). Paragraph 5.2.2 of the Response contains the Respondent’s explanation of the Hindi meanings of “maal”. For the reasons explained above in connection with the first element of the Policy (“confusingly similar”), the Hindi meanings of “maal” do very little to diminish the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.

That does not end the inquiry, since paragraph 4(b)(iv) requires the Complainant to prove that the Respondent intentionally attempted to create consumer confusion for commercial gain. In the circumstances, the Panel finds that this circumstance has been established by the Complainant. While the Hindi meaning of “maal” may have been one consideration of the Respondent for choosing the names he registered, the other circumstances in this case – in particular, the prior trademark registrations by the Complainant, its prior use of the marks to sell electronic goods online, and the Respondent’s use of the confusingly similar Disputed Domain Names to sell more or less the same goods online – sufficiently support the inference that the Respondent’s primary purpose in registering and using the Disputed Domain Names was to trade off the Complainant’s goodwill, an intention that constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Complainant has proven the third element under the Policy.

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 names <macmaal.com> and <pcmaal.com> be transferred to the Complainant. For the same reasons, the Panel rejects the Respondent’s request for a finding of reverse domain name hijacking.

D. Brian King
Sole Panelist

Dated: April 22, 2005