Maximilian.com

The timeline behind maximilian.com

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

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

NATIONAL ARBITRATION FORUM DECISION BC International Group Inc. v. Furs.com Claim Number: FA0504000451135 PARTIES Complainant is BC International Group Inc. (“Complainant”), represented by Barbara Loewenthal of Gottlieb, Rackman & Reisman, P.C., 270 Madison Avenue, New York, NY 10016. Respondent is Furs.com (“Respondent”), 580 Broadway #1101, New York, NY 10012. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <maximilian.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically April 5, 2005; the National Arbitration Forum received a hard copy of the Complaint April 7, 2005. On April 6, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <maximilian.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On April 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@maximilian.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On May 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions: 1. The domain name that Respondent registered, <maximilian.com>, is identical to Complainant’s MAXIMILIAN mark. 2. Respondent has no rights to or legitimate interests in the <maximilian.com> domain name. 3. Respondent registered and used the <maximilian.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, through its predecessors in interest, has sold various fur products, including coats, jackets, scarves, stoles, capes, vests, pants, hats and ascots since 1940. Complainant, through its predecessors in interest, registered the MAXIMILIAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,166,583 issued August 25, 1981) and with various trademark authorities worldwide. Complainant’s MAXIMILIAN mark has acquired incontestable status pursuant to 15 U.S.C. § 1065. Respondent registered the <maximilian.com> domain name January 15, 1996. The domain name resolves to a website that sells a variety of fur products, including those manufactured by Complainant as well as Complainant’s competitors. 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires Complainant to 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 Complainant has rights; and (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 to and/or Confusingly Similar Complainant established with extrinsic proof in this proceeding that it has rights in the MAXIMILIAN mark through registration of the mark with the USPTO and various international trademark authorities as well as through continuous use of the mark in commerce since 1940. 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark). The domain name that Respondent registered, <maximilian.com>, is identical to Complainant’s MAXIMILIAN mark. Respondent’s addition of the generic top-level domain “.com” is insufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights to or Legitimate Interests Complainant established rights to and legitimate interests in the disputed domain name that contains in its entirety Complainant’s mark and Complainant alleged that Respondent has no such rights or interests. Respondent did not file a Response to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by Complainant as true and accurate. 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a response, the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do). Further, by not submitting a response, Respondent has failed to rebut Complainant’s assertion. Thus, the Panel may construe Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <maximilian.com> domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Respondent is using the <maximilian.com> domain name, which is identical to Complainant’s MAXIMILIAN mark, to sell a variety of fur products, including those produced by Complainant as well as Complainant’s competitors. The Panel may find that such use is not a use 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). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of the complainant); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). Furthermore, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s MAXIMILIAN mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <maximilian.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant alleged that Respondent acted in bad faith. Respondent is using the <maximilian.com> domain name, which is identical to Complainant’s MAXIMILIAN mark, to operate a website that sells Complainant’s fur products as well as the products of competing companies. Such use constitutes disruption pursuant to Policy ¶ 4(b)(iii) and is evidence that Respondent registered and used the disputed domain name in bad faith. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”). Because the disputed domain name <maximilian.com> is identical to Complainant’s MAXIMILIAN mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Complainant’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on the website at <fanuc.com> because customers visiting the site were confused as to the relationship between the respondent and the complainant). Furthermore, Respondent registered the <maximilian.com> domain name with actual or constructive knowledge of Complainant’s rights in the MAXIMILIAN mark due to Complainant’s registration of the mark with the USPTO and with various international trademark authorities. Moreover, the Panel infers that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark due to the obvious connection between Respondent’s website and Complainant’s business. Registration of a domain name that is identical to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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) (“[T]he 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.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the complainant’s mark when it registered the subject domain name”). 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 GRANTED. Accordingly, it is Ordered that the <maximilian.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: May 19, 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.