UDRP’s were to settle clear cut disputes for trademark holders where a matching domain name or one which was confusing similar.
I think this panel has gone way beyond a set of facts that qualifies for simple in awarding a domain name murko.com registered some 17 years ago back in 1997 to a complainant on common law trademark rights grounds.
Moreover for to order a transfer of a domain name on a UDRP the complainant is suppose to show the domain holder registered the domain in bad faith and used the domain in bad faith, however this panel didn’t even mention how the domain was being used just how the whois records were being changed.
The panel took the change in ownership reflected by the whois record to come the conclusion that the domain was registered and used in bad faith.
How can the panel conclude the domain was used in bad faith when it doesn’t even discuss how the domain was used just whom it was registered to?
Here are the facts and findings by the one member panel who was Harrie R. Samaras:
Complainants (collectively, “YKK”) are privately held New York corporations based in Marietta, Georgia. They manufacture fasteners and zippers used in the garment, apparel and footwear industries. Complainants are part of the YKK Group, a zipper manufacturer that has been making zippers since the 1930s.
Pursuant to an Asset Purchase Agreement and a Bill of Sale and Assignment Agreement (dated August 8, 2006), Complainants acquired all of the assets of the going business of Murko Machinery & Die Company, LLC (“Murko”), a privately held New York company.
Since 1960, Murko has been widely acknowledged as a manufacturer of zipper machinery, having customers in the United States, the Americas (North, Central and South America).
Since August 2006, YKK has operated a machinery division under the name “Murko Machinery” or “Murko”. All goodwill in the MURKO Mark through the use of the Mark by Murko and its successor-in-interest YKK inures to YKK.
Based on a pre-complaint investigation, YKK believes Respondent was a designer of Murko’s website before YKK purchased Murko’s assets.
That person would have been responsible for designing and maintaining Murko’s website at “www.murko.com”.
In a search performed back on September 5, 2013, the WhoIs database shows that Murko Machinery & Die Corp. was the registrant of the Domain Name and Simon Ip was the Administrative and Technical Contacts.
Before YKK filed the Complaint it submitted to Network Solutions a request to change the Domain Name registrant’s name to YKK as the owner of Murko’s business assets and all right, title and interest in the MURKO Mark.
Network Solutions replied by email and copied Respondent. In response Respondent rebuffed YKK’s request stating: “This is my domain name since 2004 who [sic] can’t try/attempt to do any change without my permission. I hope you can do your job appropriate to protect my privatization [sic] please!” Respondent then changed the registrant to “Simon IP Attn Murko.com care of Network Solutions.”
Thus, now, YKK does not control the Domain Name, the current re-direct instructions, or whether the content or re-direct instructions for the website will change in the future. It cannot control the content on the website, prevent Respondent from sabotaging the website by taking steps which will result in the Domain Name no longer being actively associated with YKK or the MURKO Mark, or from directing customers, prospective customers, and other Internet users to some other unknown web address unaffiliated with and not controlled by YKK.
YKK also recently learned that Respondent was listed as the administrative contact for the domain name <murkomachinery.com>. YKK submitted a registrant name change for this domain name and Network Solutions granted its request, sending an email notice of the transfer to YKK and Respondent.
Respondent only became the registrant of the Domain Name after September 5, 2013 when he improperly and fraudulently assigned the Domain Name.
YKK’s rights in the MURKO Mark date back to 1960 and long precede Respondent’s assignment in 2013. As a result of substantial investment and promotion of MURKO products, the MURKO Mark has acquired strong commercial distinctiveness and goodwill. The MURKO Mark is coined, arbitrary and fanciful and has no descriptive meaning with regard to zipper making machine products.
YKK has not given Respondent any permission to assign himself the Domain Name. Respondent does not own and has not acquired any proper rights in the MURKO Mark or the Domain Name. Respondent is not affiliated with or employed by YKK. Respondent does not own any trademark applications or registrations for the MURKO Mark or any variants of it.
Even if Respondent was the designer of Murko’s website or worked at Murko years ago, he was in a position of trust and confidence with Murko and only registered the Domain Name as part of and within the scope of his duties and position as confirmed by his status as Administrative and Technical Contact.
Only after YKK contacted Network Solutions to update the registration information for the Domain Name with the registrar in 2013 did Respondent claim ownership of the Domain Name. Respondent was thus aware of Murko’s trademark rights in the MURKO Mark when he changed the registration of the Domain Name. Respondent has never been commonly known by the Domain Name.
Complainants have not proffered a US federal trademark registration to prove their rights in the MURKO Mark.
Respondent argues that Complainants cannot rely on the trademark application filed on October 1, 2013 with the U.S.P.T.O claiming first use in 2006 [sic, 1960] to show continuous rights since 1960.
Complainants, however, have not relied in their submissions on that application to show rights since 1960.
Rather, they are relying on common law rights in the Mark.
Respondent argues that Complainants’ evidence does not show Complainants ever acquired any rights to the MURKO Mark.
He notes that Murko Machinery & Die Corp. and Murko Machinery & Die Company, LLC were separate entities as of the date of the purchase agreement and that the Bill of Sale and Assignment that Complainants made of record to show ownership of the MURKO Mark is between Murko LLC and YKK.
Respondent further notes that a declaration Complainants made of record states that YKK purchased Murko Corp. (not Murko LLC). From this he alleges that Complainants therefore never acquired rights to the Mark. Complainants allege that pursuant to an Asset Purchase Agreement and a Bill of Sale and Assignment Agreement (dated August 8, 2006), YKK acquired all of the assets of the going business of Murko.
More specifically, they allege that YKK was conveyed, among other things, all right, title and interest in all of Murko’s rights to the names “Murko” (“the MURKO Mark”), “Murko Machinery & Die” and any other name containing the name “Murko” as well as all of the goodwill associated with the business and purchased assets (including the aforementioned marks). Respondent has not alleged that the Bill of Sale and Assignment agreement are not valid and the Panel has no reason to believe they are not. Similarly, even if the LLC and the Corp. were separate legal entities that does not mean that there was not some privity or legal relationship between them. In any event, the Panel finds that Complainants have shown that they did acquire rights from at least Murko LLC in the MURKO Mark and, thus, they have the requisite rights to satisfy this element of the Policy.
Respondent also alleges that Complainants have not offered the complete Bill of Sale and Assignment and suggest that there might be excluded assets. Even if there are excluded assets listed on an unattached schedule, the fact is that the document of record unequivocally confers rights in the MURKO Mark to Complainants.
An unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if a complainant can show that the mark is inherently distinctive or at least has acquired secondary meaning and thus has become a distinctive identifier associated with complainant or its goods and services.
In addition to evidence already of record showing use of the Mark (which Respondent never controverted), in response to the Panel’s Procedural Order No. 1, Complainants provided additional evidence to support common law use of the MURKO Mark since 1960 (i.e., two sworn declarations by the Director and the Office Manager of YKK Field Technology Center (the division of YKK in charge of zipper machinery), as well as supporting documentary evidence).
“Grasping at straws, Respondent argues that this evidence does not show continuous use because one of the declarations states that the continuous use was by Murko “Corp.” or that the brochures/ads were under that name, but the Assignment was given by Murko “LLC” and Respondent claims, without more, that there is no privity between them. The Panel is not persuaded that this hypothetical parsing negates the evidence of continuous use of the MURKO Mark that Complainants have made of record.”
Respondent argues that some of the pages that are exhibits to the declarations are not dated and thus they do not show continuous use, but this ignores many other pages that do show dates and it ignores what a holistic review of the evidence reveals.
Respondent attacks both declarations, among other things, on the ground that the declarants do not have personal knowledge of certain facts contained in the declarations, but he does not state why the declarants do not have the personal knowledge they allege. If this were not a proceeding on the papers, Respondent might be able to prove what he argues, but without contrary proof, the Panel has no reason not to believe the declarants based on their long-standing positions with YKK, their industry knowledge, and the information and exhibits provided.
Respondent argues that “[a]t most Complainants’ evidence shows the use of the Murko name by Murko Corp. until 2006; from 1997 to 2004 or 2005 in murko.com by Murko Corp.; from 2004 or 2005 to the present in murko.com by Respondent; and from August 8, 2006 until September 30, 2013 by YKK (U.S.A.) Inc.” In this statement, Respondent essentially concedes the continuous use of the MURKO Mark by either Murko or Complainants. Indeed, collectively Complainants’ evidence is sufficient to establish common law trademark rights in the MURKO Mark since 1960 by Complainants and their predecessor-in-interest Murko. Thus, the Panel concludes that Complainants have established common law rights in the MURKO Mark that are sufficient for this proceeding.
Respondent claims that at present Complainants are not using the “Murko name” by virtue of certain letters sent by Complainants to customers. One letter dated June 27, 2013 notes that “Murko, a Division of YKK (U.S.A.) Inc. will be closing its doors September 30, 2013.” Among other things, the one-page letter informs customers what they should do for ordering replacement parts and wire. It says nothing about the MURKO Mark including that it will no longer be in use. The other letter dated November 21, 2013, informs customers that “[o]n November 8, 2013, YKK (U.S.A.) Inc. sold equipment used in Murko Division’s wire and parts businesses to Harry Gold and Johnny Rhambharose, respectively. . . . YKK will no longer be associated with this business in any way, and all future orders and correspondence should be directed to these gentlemen.” Again, nothing in this letter says anything about the non-use of the MURKO Mark.
Incorporating a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark for purposes of the Policy. Insofar as <murko.com> incorporates verbatim the MURKO Mark, in which Complainants have rights, the Panel finds the Domain Name is identical to the Mark.
Complainants must prove Respondent has no rights to or legitimate interests in the Domain Name.
Complainants contend: (1) on August 6, 2006 YKK acquired all right, title and interest in the MURKO Mark and the goodwill associated with it; (2) Respondent neither owns nor acquired any proper rights in the MURKO Mark nor have Complainants given Respondent permission to use the Domain Name or assign it to himself; (3) Respondent has no affiliation with YKK; (4) Respondent does not own any trademark applications or registrations for the MURKO Mark or any variants of it; (5) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with an offering of (his) goods or services. Using the Domain Name as it always has been used to direct the public to Murko’s, and now Complainants’, website is not a bona fide offering of goods or services by Respondent or a legitimate noncommercial or fair use; it only highlights Respondent’s efforts to create a likelihood of confusion about the source, affiliation or endorsement of the Domain Name with YKK; and (6) Respondent has not been and is not commonly known by the Domain Name.
Complainants further argue that even if Respondent was the designer of Murko’s website or worked at Murko in the past, he was in a position of trust and confidence and registered the Domain Name within the scope of his duties as confirmed by his status as Administrative and Technical Contact. It was only after YKK contacted the Registrar to update the Domain Name registration information in 2013 that Respondent claimed to own the Domain Name. The Panel concludes that Complainants have set forth a prima facie case that Respondent does not have any rights or legitimate interests in the Domain Name.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the respondent to rebut the complainant’s evidence.
As discussed above, Respondent has failed to do this in accordance with the Rules and Policy.
It bears mentioning that a refrain in Respondent’s emails was that: (1) the MURKO Mark was not trademarked/ registered when he registered the Domain Name for Murko; and (2) Respondent somehow owns the Domain Name.
With regard to the first point, Respondent appears to believe that ownership of a trademark is synonymous with registration of a mark, ignoring the legal import of common law rights.
With regard to the second point, Respondent hasn’t made of record any document between himself and Murko showing that Murko gave Respondent ownership rights to use or own the Domain Name for his own use.
Such a claim is contradicted by the Network Solutions WhoIs database information for the Domain Name dated September 5, 2013 showing that Murko, not Respondent, was listed as the registrant and owner of the Domain Name.
Even assuming that Respondent designed and/or hosted a website for Murko, it is doubtful that the company intended for Respondent to own the Domain Name for his own use, insofar as other than the work done for Murko, Respondent has not argued he has any rights or legitimate interests in the Domain Name as defined under the Policy. In any event, whether Respondent has any contractual rights to the Domain Name by virtue of work he did for Murko is outside the ambit of these proceedings and the Panel’s authority to determine.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
When this Complaint was filed the registrant details on Network Solutions’ WhoIs database showed a private registration under the name “Simon Ip Attn Murko.com care of Network Solutions.”
The same private registration was used for the registrant’s administrative and technical contacts. Complainants performed a search back on September 5, 2013, and the WhoIs database showed at that time Murko as the registrant of the Domain Name, and Simon Ip was listed solely as the Administrative and Technical Contacts.
Before filing the Complaint, YKK submitted to Network Solutions a request to change the registrant of the Domain Name to YKK to reflect the new ownership of the MURKO Mark.
Network Solutions replied by email and copied Respondent. In response Respondent wrote: “This is my domain name since 2004 who [sic] can’t try/attempt to do any change without my permission. I hope you can do your job appropriate to protect my privatization [sic] please!”
Respondent then changed the registrant to “Simon IP Attn Murko.com care of Network Solutions.”
It is clear both from Respondent’s submissions to the Center and the WhoIs database information that Respondent knew of both Murko and Complainants before naming himself as the registrant of the Domain Name.
Furthermore, it is evident that Respondent understood at some level Murko’s long-standing rights in the MURKO Mark insofar as he acknowledged the same in the January 2, 2014 submission.
Until recently, he was listed solely as the Technical/Administrative Contact, not the registrant. Upon learning of Complainants’ desire to be named as the registrant after acquiring rights in the Mark, Respondent acted and changed the Domain Name registration to his own. Based on these circumstances, and having already concluded that Respondent does not have any rights or legitimate interests in the Domain Name, the Panel concludes that Respondent registered the Domain Name in bad faith.
As a result of Respondent’s acquisition of the Domain Name and use with Complainants’ own website, Complainants do not control the Domain Name, the current re-direct instructions, or whether the content or re-direct instructions for the website will change in the future.
Complainants cannot control the content on the website, prevent Respondent from sabotaging the website by taking steps which will result in the Domain Name no longer being actively associated with YKK or the MURKO Mark, or from directing customers, prospective customers, and other Internet users to some other unknown web address unaffiliated with and not controlled by YKK.
This case does not fall neatly into any of the four criteria in paragraph 4(b) of the Policy that are to be considered as evidence of the registration and use of a domain name in bad faith.
Those criteria, however, do not limit a panel’s authority to find bad faith use of a domain name as is evidenced here. In this case, with the Domain Name in the hands of someone who refuses to be identified and has not proved any rights or legitimate interests in the Domain Name, Respondent’s use of the Domain Name with Complainants’ own website is disruptive to Complainants’ business, and harmful to their reputation and commercial viability and constitutes bad faith use.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.