Maupintour LLC v. Stephen Widmer
[Indexed as: Maupintour v. Widmer]
[INDEXED AS: MAUPINTUORS.COM]
eResolution
Administrative Panel Decision
Case No.: AF-0266
Commenced: 5 July 2000
Judgement: 3 August 2000
Panelist: Mark R. Joelson
Domain name Domain name dispute resolution Use of trade name and trademark in business Long established interest and right by Complainant - Pending registration applications Likelihood of confusion Not commonly known by domain No bona fide goods or services offered Bad faith registration Domain registered to sell or rent to Respondent Intent to attract consumers for commercial gain by creating confusion Plural form.
Complainant uses the trade name and registered trademark MAUPINTOUR to run its escorted tour and travel agency business. Complainant has other registration applications pending in respect to the mark. Complainant registered the domain name MAUPINTOUR.COM which it uses in conjunction with its business. Respondent registered the domain name in dispute MAUPINTOURS.COM. Complainant asks for transfer of domain name. Respondent did not file a response.
Held, Name Transferred to Complainant
The domain name in dispute is confusingly similar to Complainants
trademark. Making the Complainants trademark plural in the disputed domain
name creates confusion and damages the reputation of Complainant.
Respondent has no rights or legitimate interest in the disputed
domain name. Respondent did not submit a response and Complainant has shown
evidence that it has had rights in the name MAUPINTOR for a long time.
The domain name was registered in bad faith. Complainants
use of the name Maupintor in conjunction with its business for a long time,
and the confusing similarity between the registered trademark of Complainant
and the disputed domain name, and the lack of a response means that the
domain name was only registered for the purpose of selling, renting or
transferring it to Complainant at an amount in excess of out-of-pocket
costs incurred and that Respondent has tried to attract for commercial
gain, Internet users to its site by creating confusion among Internet users.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
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Joelson, Panelist: -
1. A Complaint was filed by MAUPINTOUR LLC of Lawrence, Kansas, on-line
through eResolution's Website on June 23, 2000, with the hard copy received
by eResolution on June 28, 2000. The named Respondent is STEPHAN WIDMER
of Chicago, Illinois, the registered owner of the disputed domain name:
maupintours.com. The Registrar is Network Solutions Inc. The Complainant
seeks transfer to it of the disputed domain name.
2. The procedural history of this case, including the persistent efforts
by the Clerk's Office of eResolution to notify the Respondent of the commencement
of this proceeding, is set out in detail in the letter dated July 26, 2000,
sent by Helen Finn, lawyer for eResolution, to Mark R. Joelson, lead panelist
appointed to hear this case, which is attached to this decision as Exhibit
1. The Respondent has not submitted a Response to the Complaint.
3. Paragraph 5 (e) of the Rules for Uniform Domain Name Resolution
Policy (hereafter "ICANN Rules") provides that, if the Respondent does
not submit a Response, "in the absence of exceptional circumstances, the
Panel shall decide the dispute based upon the complaint." Accordingly,
since the Panel knows of no exceptional circumstances here, it shall decide
the dispute based upon the Complaint.
4. The Complaint asserts that Complainant and its predecessors have
used the trade name and trademark MAUPINTOUR since as early as 1951 in
connection with escorted tour services and travel agency services. In this
connection, Complainant submits, as an annex to its Complaint, a copy of
U.S. federal service mark registration No. 1635033, issued February 12,
1991, owned by Complainant in class 39 for escorted tour services and travel
agency services, and containing the word "Maupintour." Complainant also
states that it has pending registration applications and other plans relating
to the mark MAUPINTOUR. The Complaint states further that Complainant registered
its domain name, maupintour.com, in 1995 and conducts a thriving business
under the name, service mark and domain name.
5. The Complaint points out that the disputed domain name simply adds
an "s" to the Complainant's registered mark, thus creating a likelihood
of confusion, a false designation of origin, passing off and other injury
to Complainant and its good will. The Complaint further asserts that the
contested domain name should be considered as having been registered and
being used in bad faith because the Respondent has never been commonly
known by the domain name and there has been no evidence of its use of or
demonstrable preparations to use the domain name in connection with a bona
fide offering of goods or services.
6. Paragraph 1 of the Uniform Domain Name Dispute Resolution Policy
(hereafter the "ICANN Policy") states that the ICANN Policy is incorporated
by reference in each Registration Agreement and sets forth the terms and
conditions in connection with a dispute between the Registrant and any
party other than the registrar over the registration and use of any Internet
domain name registered by the Registrant. The ICANN Policy further states,
in Paragraph 4 (a), that the Registrant is required to submit to a mandatory
administrative proceeding in the event that a third party asserts to the
applicable dispute-resolution service provider and proves in the administrative
proceeding that (i) the registered domain name is identical or confusingly
similar to a trade mark or service mark in which the complainant has rights;
and (ii) the Registrant has no rights or legitimate interests in respect
of the domain name; and (iii) the domain name has been registered and is
being used in bad faith. The Respondent is therefore bound to submit to
this proceeding initiated by Complainant, which is subject to the provisions
of the ICANN Policy and the ICANN Rules.
7. Paragraph 14 (a) of the ICANN Rules provides that, in the absence
of exceptional circumstances, if a Party fails to comply with any requirement
of those Rules, the Panel shall draw therefrom such inferences as it deems
appropriate. Here the Respondent has failed to file a Response as required
by Rule 5 of the ICANN Rules. Accordingly, the Panel shall draw the inference
that the Respondent has no evidence to submit in his behalf in this proceeding.
8. The Complainant in this proceeding has made the three assertions
required by the ICANN Policy, namely that the registered domain name is
confusingly similar to the Complainant's registered service mark, that
the Respondent has no legitimate right in respect of the domain name, and
that the contested domain name has been registered and is being used in
bad faith. The question before this Panel, therefore, is whether the Complainant
has proved that each of these elements listed by Paragraph 4 (a) of the
ICANN Policy is present.
9. Is the disputed domain name identical or confusingly similar to
the Complainant's service mark? The Panel finds that the Complainant has
satisfied its burden of proof in this regard. The disputed domain name
adds only an "s" to the Complainant's service mark of Maupintour, so that
the domain name is confusingly similar to the Complainant's service mark.
10. Does the Respondent have any rights or legitimate interests in
respect of the domain name? The Panel finds, on the record before it, that
Complainant has satisfied its burden of proof in this regard. In the absence
of any Response from the Respondent indicating that it has any rights or
legitimate interests in the disputed domain name, and in view of the substantial
evidence submitted by Complainant of its legitimate interests and rights
in the name "Maupintour", the Panel accepts Complainant's proof as conclusive.
11. Was the contested domain name registered and is it being used in
bad faith? The Panel finds that the Complainant has satisfied its burden
of proof in this regard. To show such bad faith, the Complainant is required
to demonstrate that circumstances of the type set forth in Paragraph 4
(b) of the ICANN Policy are present. In view of Complainant's long established
interest and right in the name "Maupintour" in connection with its business,
the substantial likelihood of confusion between the contested domain name
and Complainant's registered service mark, and the lack of any Response
that might justify Respondent's claim to the domain name, the Panel concludes
that the following evidence of the registration and use of the domain name
by the Respondent exists and is conclusive:
(A) there are circumstances indicating that the Respondent has registered
or has 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 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; and (B) there are circumstances
indicating that, by using the domain name, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its web site
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 Respondent's web site or location or of a product or service on the
Respondent's web site or location.
12. Pursuant to Paragraph 2 of the ICANN Policy, setting forth the
representations and warranties made by the Respondent in applying to register
the contested domain name, the Panel finds that Respondent falsely and
in bad faith represented and warranted that, to its knowledge, the registration
of the domain name would not infringe or otherwise violate the rights of
any third party.
13. Complainant has therefore met its burden of proof. Having found
for the Complainant, the Panel must now address the issue of the remedy.
Complainant requests that the Panel order the transfer of the contested
domain name to the Complainant. Pursuant to Paragraph 4 (i) of the ICANN
Policy, and in view of the close similarity of the disputed domain name
to Complainant's name and registered service mark, this is an appropriate
remedy. Accordingly, the Panel ORDERS that the domain name maupintours.com
be transferred to the Complainant.
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