WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patrick Roehrman v. WhoisGuard Protected / hu huaijin

Case No. D2020-3387

1. The Parties

The Complainant is Patrick Roehrman, United States of America (“United States” or “U.S.”), represented by Schroeder Law PC, United States.

The Respondent is WhoisGuard Protected, Panama / hu huaijin, China.

2. The Domain Name and Registrar

The disputed domain name <mtknives.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Response sent informal email communications to the Center on January 11 and January 14, 2021. The Center sent the commencement of Panel Appointment email to the Parties on January 18, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on February 17, 2021. 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. Factual Background

The Complainant is an individual based in Missouri, United States. He has since 2011 manufactured and sold a range of specialist handcrafted knives designed for use in connection with activities such as hiking, hunting and other outdoor pursuits. These are promoted under the name MT Knives. The Complainant operates a website linked to the domain name <mtknives.net> promoting his range of knives. The Complainant is the owner of U.S. Trademark Registration No. 5,961,221 for the trademark MT KNIVES as used in connection with “knives, namely, sport, hunting, throwing, neck, filleting, kitchen, chef, carving, paring, and fixed blade knives.” That trademark was registered on January 14, 2020, following an application made on July 5, 2019. It claims a first use in commerce date of April 1, 2011. That trademark is referred to as the “MT Knives” trademark in this decision.

The Disputed Domain Name was registered on October 23, 2017. It resolves to a website which contains “pay-per-click” (“PPC”) links which appear likely to be automatically generated. Many of these lead to third party sites concerning knives.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Disputed Domain Name is identical to the terms “MT Knives” in which the Complainant claims to have registered and unregistered trademark rights.

The Respondent has no rights or legitimate interests in the term “MT Knives”.

The Disputed Domain Name was registered and is being used in bad faith. It is being used for a PPC website which attracts traffic because the Disputed Domain Name has adopted the Complainant’s well known and famous trademark.

B. Respondent

It is convenient to set out in its entirety the English content of the Respondent’s informal communication of January 11, 2021. It read as follows: “Hi, If conditions permit, I hope to communicate in Chinese. The trademark of the complainants was registered in January 2020, while my domain name was registered in October 2017 and has been held by me all the time. I think this is a malicious arbitration initiated by the complainants, and I totally do not accept it. And this is not in line with the domain name arbitration elements”.

The communication also contained some Chinese logograms. The Panel does not understand Chinese but infers that these may simply be a repeat of the English text (and see below as to language). On January 14, 2021, in response to a query from the Center the Respondent confirmed that his email of January 11 2021, was his “reply”. The Panel will exercise its discretion and accept that part of the Respondent’s communication which was in English as being the Response to the Complaint.

6. Discussion and Findings

Preliminary Matters – Respondent Identity

The Panel notes this is a case where one Respondent (“WhoisGuard Protected”) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case, the Panel considers the substantive Respondent to be hu huaijin and references to the Respondent are to that person.

Preliminary Matters – Language of the Proceedings

The language of the registration agreement for the Disputed Domain Name is English. Paragraph 11 of the Rules provides as follows: “Language of Proceedings.(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel notes the Respondent expressed the wish that he hoped to communicate in Chinese. However, the Panel also notes that he was able to communicate in English and confirmed to the Center that his communication was his “reply”. In the circumstances the Panel concludes that these proceedings should be in English.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(1) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(3) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has rights in the MT Knives trademark. It does not matter for the purposes of this element whether the Disputed Domain Name was registered before the MT Knives trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview 3.0” section 1.1.3:

“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.

Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP”. See below as to bad faith issues.

It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Whilst the word “knives” is manifestly descriptive its combination with the letters “MT” produces a term which is in the Panel’s opinion distinctive, and which on the evidence before the Panel only relates to the Complainant. It is also clear that whilst the Complainant only filed his application for the MT Knives trademark in 2019 he had a well-established and well regarded business making and selling knives branded as “MT Knives” dating back to 2011. The Complainant has filed a body of evidence, which convincingly shows that his knives were highly regarded in specialist circles interested in knives for use in connection with outdoor pursuits with effect from 2012.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

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

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is 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.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the term “MT Knives”. The Complainant had clearly chosen the term “MT Knives” as a source identifier prior to the Respondent’s registration of the Disputed Domain Name even though his application for a registered trademark did not occur until later.

The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. The Respondent asserts correctly that his registration of the Disputed Domain Name predated the Complainant’s registration of the MT Knives trademark. However, the Respondent has provided no explanation of how or why he chose to register the term “mtknives”. He is also silent as to his knowledge of the Complainant or his business at the time the Disputed Domain Name was registered. In those circumstances the Panel does not consider the Respondent has discharged the burden on him to show he has any rights or legitimate interest in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the distinctive nature of the term “MT Knives”, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.

Under the Policy paragraph 4b(iv) evidence of registration and use in bad faith is established where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location”.

In the present case, the Panel concludes that it is unlikely that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The Panel assumes that had the Respondent done so he would have advanced a positive case to that effect (which to succeed would have needed credible and corroborating evidence). The Respondent has not done so. The Panel therefore concludes the Respondent knew of the Complainant and/or its product range when he decided to register the Disputed Domain Name.

The Panel infers the Respondent selected the Disputed Domain Name with knowledge of the Complainant or its products and linked it to a PPC webpage. The Panel concludes that paragraph 4b(iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s MT Knives brand, and the Respondent derives commercial gain as a result. The website linked to the Disputed Domain Name comprises a series of PPC links to other third-party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2006-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.

See also WIPO Overview 3.0section 3.5: “Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?

Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.

The Panel does not consider that it matters that the Complainant did not have any registered trademark rights at the time the Disputed Domain Name was registered. The Complainant’s evidence shows significant publicity and specialist comment about its MT Knives range of knives with effect from 2012 and which in the Panel’s view establishes common law rights in the term MT Knives for the purpose of the UDRP. The Panel reaches this view bearing in mind that the term MT Knives is a distinctive term with no independent meaning (see FinanceMalta v. Adriano Cefai, WIPO Case No. D2011-1246) and the Panel is satisfied that prior to the registration of the Disputed Domain Name the term was recognised as relating to the Complainant’s products by persons with an interest in specialized high quality knives for outdoor pursuits. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 “even if Complainant’s mark acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of paragraph 4(a)(i) of the Policy.” See also Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123.

Further the Panel notes that the Respondent has not in his Response provided any positive case as to good faith that he might have. The Panel infers that none exists.

As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <mtknives.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: March 4, 2021