Menardsad.com + 4 more domains

The timeline behind menardsad.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Menard, Inc., d/b/a Menards v. D. Bargowski Claim Number: FA0502000430904 PARTIES Complainant is Menard, Inc. d/b/a Menards (“Complainant”), represented by Caldwell A. Camero, 4777 Menard Dr., Eau Claire, WI 54703. Respondent is D. Bargowski (“Respondent”), 213 Superior Boulevard, Wyandotte, MI 48192. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com>, registered with Wild West Domains, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Honorable Paul A. Dorf (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2005. On February 25, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com> are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 23, 2005 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@menardsad.com, postmaster@menardsads.com, postmaster@menardsdeals.com, postmaster@menardspecials.com, and postmaster@menardsspecials.com by e-mail. A timely Response was received and determined to be complete on March 23, 2005. Even though the Response was received in hard copy only, the Response was reviewed and considered by the Panelist. On March 30, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant contends that the domain names at issue are identical or confusingly similar to marks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the domain names at issue; and that the domain names at issue were registered and are being used in bad faith. B. Respondent The Respondent contends they did not register the domain name in bad faith. FINDINGS Complainant is engaged in the business of retailing home improvement products throughout the Midwest, and operates approximately 200 stores in this region. Complainant has used its famous mark since 1959, and holds 27 U.S. trademark and service mark registrations for said mark. Respondent states it is an educational group through the U.S.A., operating as school message boards.com, with affiliate sites such as elementary school message board(s).com, middle school message boards(s).com, and the like. 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) 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 owns and operates a home improvement retail chain in the Midwestern United States. Complainant holds numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for this mark (Reg. 2,191,048 issued September 22, 1998; Reg. No. 2,088,956 issued August 19, 1997; Reg. No. 2,078,549 issued July 15, 1997; Reg. No. 2,205,296 issued November 24, 1998; Reg. No. 2,195,463 issued October 13, 1998; Reg. No. 2,205,295 issued November 24, 1998; Reg. No. 2,195,462 issued October 13. 1998; Reg. No. 2,195,879 issued October 13, 1998; Reg. No. 2,191,047 issued September 22, 1998; Reg. No. 2,635,036 issued October 15, 2002; and Reg. No. 2,635,037 issued October 15, 2002) and for the MENARDS.COM mark (Reg. No. 2,573,989 issued May 28, 2002). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of a complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark and that “[t]rademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”). The domain names at issue use Complainant’s famous mark coupled with a generic word, or a deleted letter from the mark. The addition of generic words and the deletion of a letter do not significantly distinguish the domain names from the mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access complainant’s website, think that an affiliation of some sort exists between complainant and respondent, when in fact, no such relationship would exist); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name that merely adds the letter ‘s’ to complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of complainant’s services and those who were to view a web site provided by respondent accessed through the contested domain name); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, 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). In addition, the domain names at issue pair Complainant’s famous mark with the addition of various generic descriptive terms which are commonly used in conjunction with the retail sales business, causing even more confusion. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word auction used in its generic sense); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Rights or Legitimate Interests There is no evidence to indicate Respondent has used the domain names at issue in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). A review of the evidence presented does reveal that the domain names at issue resolve to a website offering the domain names for sale. Respondent claims that sites were in use previously, but no objective evidence has been presented to substantiate this claim. 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); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also 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). There is no evidence to indicate that the Respondent has ever, as an individual, business or other organization, been commonly known by the name “menards.” Furthermore, Complainant neither gave Respondent authorization nor licensed Respondent to register or use the domain names at issue. Respondent has not presented any evidence to indicate that Respondent is, was or ever will be commonly known by the domain names at issue. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). Registration and Use in Bad Faith Respondent states that they are an educational group throughout the U.S.A. Given the geographic location of Complainant’s retail stores and the address provided by Respondent to the registrar of the domain names, suggests that Respondent should have been reasonably aware of Complainant’s mark. Moreover, Respondent registered the domain names with actual or constructive knowledge of Complainant’s mark because Complainant’s mark is registered with the USPTO. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); 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); see also Orange Glo Int’l v. 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 admits that it offered the domain names at issue for sale over and above its out of pocket expenses to obtain the domain name registrations. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[W]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner."); 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); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com>] domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark”). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <menardsad.com>, <menardsads.com>, <menardsdeals.com>, <menardspecials.com>, and <menardsspecials.com> domain names be TRANSFERRED from Respondent to Complainant. Honorable Paul A. Dorf (Ret.), Panelist Dated: April 18, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.