DECISION

Monaco Coach Corporation v. Stan Urquhart

Claim Number:  FA0401000226456

PARTIES

Complainant is Monaco Coach Corporation (“Complainant”), represented by Anne E. Naffziger, of Leydig Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL, 60601. Respondent is Stan Urquhart (“Respondent”), 25 Glenbourne Court, Halifax, NS, Canada B3S 1E2.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monacocoaches.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 15, 2004; the Forum received a hard copy of the Complaint on January 16, 2004.

On January 15, 2004, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <monacocoaches.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2004 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@monacocoaches.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 Forum transmitted to the parties a Notification of Respondent Default.

On February 20, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Respondent’s <monacocoaches.com> domain name is confusingly similar to Complainant’s MONACO and MONACO COACH marks.

2. Respondent does not have any rights or legitimate interests in the <monacocoaches.com> domain name.

3. Respondent registered and used the <monacocoaches.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Monaco Coach Corporation, through its predecessors in interest, was founded in 1968 to build high-quality motorhomes. In 2003, Complainant grossed over $1.167 billion in revenue and spent over $11.7 million in advertising, and has been named by SmartMoney Magazine as one of the ten best stocks to invest in for the next ten years. Complainant operates its motorhome buisness under the registered MONACO mark (U.S. Reg. No. 2,655,209, registered on December 3, 2002 with a stated first use in 1969) and unregistered MONACO COACH mark. Complainant also operates an online presence at the <monacocoach.com> domain name (where it receives more than 91,000 unique visits per month) and the <monaco-online.com> domain name (which receives approximately 52,000 unique visits per month).

Respondent, Stan Urquhart, registered the <monacocoaches.com> domain name on April 9, 2003. Respondent uses the disputed domain name to criticize, comment on and discuss Complainant’s motorhomes. The website is entitled “MonacoCoaches.com” and includes several pictures of Complainant’s MONACO branded motorhomes. The bottom of the homepage at the disputed domain name also includes a disclaimer, and a link to Complainant’s website at the <monacocoach.com> domain name.

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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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 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 and/or Confusingly Similar

Complainant has established rights in the MONACO mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce. Additionally, Complainant has established common-law rights in the MONACO COACH mark through proof of secondary meaning associated with the mark due to widespread and continuous use of the mark in commerce. 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 McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy).

Respondent’s <monacocoaches.com> domain name is confusingly similar to Complainant’s MONACO COACH mark. As the disputed domain name merely pluralizes Complainant’s mark, the overall impression of the domain name is confusingly similar to the underlying mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (“The addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation.”).

Accordingly, the Panel finds that the <monacocoaches.com> domain name is confusingly similar to Complainant’s MONACO COACH mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel believes that the only avenue that would support a finding that Respondent has rights or legitimate interests in the disputed domain name would be under Policy ¶ 4(c)(iii), which states that a “legitimate noncommercial or fair use” of a domain name is an example of circumstances demonstrating rights or legitimate interests in a domain name. In this case, Respondent’s website may or may not be covered by the protections of the First Amendment, but what is clear is that Respondent does not have permission to use Complainant’s trademark in its domain name to attract Internet users to its criticism of Complainant. Respondent’s right to express its views is trumped in this case by the public’s right not to be confused as to whether Respondent’s website is sponsored or endorsed by Complainant. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . .  is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“The Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Name.Space Inc. v. Network Solutions, [2000] USCA2 17; 202 F.3d 573, 585 (2d Cir. 2000) (holding that, although the content of Respondent’s site may be entitled to First Amendment protection, Respondent’s use of Complainant’s trademark in the domain name of its site is not protected. Since Respondent’s domain name merely incorporates Complainant’s trademark, it does not constitute a protectable, communicative message).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <monacocoaches.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As stated above, Respondent does not have the right to use Complainant’s trademark as a means of identifying itself to Internet users. The fact that the disputed domain name is nearly identical to Complainant’s MONACO COACH mark negates any argument that the domain name was either registered or is being used in good faith. See Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct that than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant); see also Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).

The Panel thus finds that Respondent registered and used the <monacocoaches.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <monacocoaches.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, N.Y. (Ret.)

Dated:  February 24, 2004

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