mcays.com

Federated Western Properties, Inc. v. Private

Case No. D2003-0666

The Complainant is Federated Western Properties, Inc., Attn: Wendy Schmidt, of Las Vegas, Nevada, United States of America, represented by Amster, Rothstein & Ebenstein, United States of America.

The Respondent is Private, Attn: Jack Private, private, Maine, United States of America.

The disputed domain name < mcays.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2003. On August 26, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On August 26, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 2, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of 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 September 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2003. The Respondent did not submit any formal Response. Accordingly, the Center notified the Respondent of failure to comply with the Response deadline, and the consequences thereof, on October 2, 2003.

The Center appointed Will Hill Tankersley Jr. as the Sole Panelist in this matter on October 21, 2003. The Panel finds that it was properly constituted. The Panel 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.

4.1 Complainant Federated Western Properties, Inc. ("FWP" or "Complainant") is the owner of the federally registered trademark MACY’S. The trademark MACY’S is in International Class 25 ("diverse items of wearing apparel") (Registration Number 78,333), International Class 42 ("department store services") (Registration Number 922,972), and International Classes 29 and 30 ("various food items") (Registration Number 360,801). Complainant has made continuous and exclusive use of the trademark MACY’S in interstate commerce since at least as early as 1858. Complainant has filed the appropriate documentation with the United States Patent and Trademark Office ("USPTO") to make MACY’S incontestable under 15 U.S.C. § 1065.

4.2 Complainant also owns the federally registered trademark MACYS.COM. The trademark MACYS.COM is in International Class 35 ("electronic retail department store services") and International Class 42 ("assisting others in selecting gifts for weddings and other occasions") (Registration Number 2,478,842). Complainant has made continuous and exclusive use of the trademark MACYS.COM in interstate commerce since at least as early as August 1998. Complainant has filed the appropriate documentation with the USPTO to make MACYS.COM incontestable under 15 U.S.C. § 1065.

4.3 Complainant deals in a wide variety of clothing and household goods under the marks MACY’S and MACYS.COM, and it is undisputed that FWP has spent millions of dollars promoting and advertising its wares under the above marks. Advertisement has occurred by newspaper, magazine, television, trade publications, and the like. It is also undisputed that MACY’S is a famous mark.

4.4 Respondent is not a licensee of Complainant, and is not authorized to use Complainant’s Marks. Respondent has registered the domain name <mcays.com>. The Panel was unable to access the web page at the time this decision was being prepared. Entry of "www.mcays.com" or "www.mcays.com" resulted in an automatic forward to the Complainant’s Website.

5.A(1) Complainant has established statutory and common law rights in the Complainant’s Marks.

5.A(2) Complainant has established that the Complainant’s Marks are famous.

5.A(3) Complainant contends that Respondent’s domain name <mcays.com> is virtually identical or confusingly similar to both of the Complainant’s Marks, resulting in infringement on the Complainant’s Marks.

5.A(4) Complainant contends that the Respondent has no rights to the Complainant’s Marks.

5.A(5) Complainant contends that Respondent registered the domain name <mcays.com> in a bad faith effort to divert customers away from Complainant’s goods, Marks, and Website.

5.A(6) Complainant contends that access to Respondent’s Website results in an immediate forward to a site maintained by Wal-Mart.

5.B(1) Respondent did not reply to the Complainant’s contentions formally.

5.B(2) Respondent did respond informally via e-mail.

5.B(3) Respondent contends that the domain name <mcays.com> was not registered in bad faith, but with the intent to create a site dedicated to gardening.

5.B(4) Respondent contends that the domain name <mcays.com> was linked to the Wal-Mart site because that site was an affiliate program Respondent was active in and resulted in no measurable income to Respondent.

5.B(5) Respondent contends that the link to Wal-Mart’s site has since been removed and the domain name <mcays.com> has now been linked to <macys.com>.

6.1 The Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 The Center forwarded notification of the Complaint to the Respondent via email in accordance with the contact details found in the appropriate WHOIS database, as the Respondent never provided an appropriate street address, even after such was requested.

6.4 Based on the methods employed to provide the Respondent with notice of the Complaint and default, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a formal reply is not due to any omission by the Center.

6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s (disputed) domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s (disputed) domain name has been registered and is being used in bad faith.

In the administrative proceeding, the Complainant must prove that each of these three elements are present.

6.6 As the Respondent has failed to submit a formal response to the Complaint, the Panel may accept as true allegations of said Complaint. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

6.7 Based upon the Complainant’s continuous use of the MACY’S and MACYS.COM Marks since at least as early as 1858 and 1998 (respectively) as well as trademark registrations with the USPTO, the Complainant has statutory and common law rights in the Complainant’s Marks.

6.8 Neither "MACY’S" nor "MACYS.COM" sounds like "mcays.com" when spoken. Although "mcays.com" results from transposing only two letters in "MACYS.COM," when one looks at both names, they do not have a confusingly similar appearance. Both names could represent a person’s name, but they have no independent meaning to compare.

6.9 There has been no indication that Respondent registered the name as a squatter and attempted to sell it to Macy’s.

6.10 No evidence of actual confusion was presented.

6.11 Given the above analysis, the factors tip in favor of the Respondent.

6.12 All of the cases cited by the Complainant regarding virtually identical names can be distinguished in that those cases involved names that were actually identical, save for differences in capitalization or the addition or subtraction of a hyphen. "MACYS.COM" and "mcays.com" are spelled differently, unlike in any of the cited cases. The cited cases involve the following marks: 1) Brookfield Communications-- moviebuff.com v. MovieBuff; 2) Public Serv. Co.--energy-place.com v. Energy Place; 3) Minnesota Mining-- post-it.com v. Post-It; 4) Interstellar Starship-- epix.com v. EPIX; and 5) Planned Parenthood-- planned-parenthood.com v. Planned Parenthood.

6.13 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.14 Complainant persuasively contends that its marks are famous and that the Respondent has never had rights in these marks. There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the Disputed Domain Name.

6.15 The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

6.16 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b) states:

(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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.

6.17 Respondent has not attempted to sell the Disputed Domain Name to the Complainant or one of the Complainant’s competitors.

6.18 There is no evidence that Respondent has engaged in a pattern of registering domain names similar to the Complainant’s in an effort to prevent the Complainant from registering such domain names.

6.19 Respondent is not in competition with the Complainant.

6.20 No proof has been offered that the Disputed Domain Name was registered with an intent to divert traffic from Complainant’s site. Respondent would have no commercial interest in stealing Complainant’s customers, as he was planning on devoting the Website to gardening, and even if he started selling gardening products from the Website, Complainant does not deal in that product line.

6.21 The Panel finds that the Complainant has failed to carry its burden of proof. It has not been established that the Respondent registered the Disputed Domain Name in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied.