National Arbitration Forum

DECISION

Mohawk Canoe Club, Inc. v. Mohawk Computer Company, Inc. c/o George Fluck

Claim Number: FA0411000371790

PARTIES

Complainant is Mohawk Canoe Club, Inc (“Complainant”), represented by Robert V. Fodera, of Fox and Fox LLP, 70 South Orange Avenue, Livingston, NJ 07039.  Respondent is Mohawk Computer Company, Inc. c/o George Fluck (“Respondent”), 229 Sharon Road, Robbinsville, NJ 08691.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mohawkcc.biz>, <mohawkcci.com>, <mohawk.cc> and <mccshare.com>, registered with Network Solutions 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.

 Dennis A. Foster as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2004; the National Arbitration Forum also received a hard copy of the Complaint on November 29, 2004.

On December 1, 2004, Network Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <mohawkcc.biz>, <mohawkcci.com>, <mohawk.cc> and <mccshare.com> are registered with Network Solutions Inc. and that the Respondent is the current registrant of the names.  Network Solutions Inc. has verified that Respondent is bound by the Network Solutions 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 December 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 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@mohawkcc.biz, postmaster@mohawkcci.com, postmaster@mohawk.cc and postmaster@mccshare.com by e-mail.

A timely Response was received and determined to be complete on December 27, 2004.

On January 4, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

--On June 15, 2004, Complainant was the prevailing party in a domain name dispute regarding the <mohawkcc.com> domain name registered with Network Solutions, Inc.  The decision rendered by the National Arbitration Forum in the case Mohawk Canoe Club, Inc. v. Universal Computing Servs., FA 267477 (Nat. Arb. Forum June 15, 2004), ordered the <mohawkcc.com> domain name transferred to Complainant (Complaint Exhibit A).

Respondent, Mohawk Computer Company, Inc. and George Fluck, have once again converted and misappropriated Internet domain names owned by Complainant. 

In or about July 2000, Complainant began to use the website at  <mohawkcc.com> for the sale of Club merchandise (items including, but not limited to hats and t-shirts bearing the Club logo) (Complaint Exhibit A). 

At the annual elections for officers in November, 2001, Respondent lost his bid to be elected Vice-Commodore in Complainant’s organization.

Soon after Complainant won the decision against the Respondent in Mohawk Canoe Club, supra, Respondent began to use and operate the <mohawkcc.biz>, <mohawkcci.com>, <mohawk.cc> and <mccshare.com> domain names (collectively “<mohawkcc.biz>”) for his own purposes.  By his actions, Respondent has once again misappropriated Complainant’s name and its website.

--It has become painfully obvious that Respondent’s motivation in registering the <mohawkcc.biz> domain names is to harass and antagonize Complainant and its members and force them to spend money unnecessarily to defend their rights.

--Respondent has registered and used the disputed domain names in bad faith.  Respondent has registered the <mohawkcc.biz> domain names to:

1. prevent the Mohawk Canoe Club, Inc., the owner of the mark, from reflecting the mark in a corresponding domain name;

2.   disrupt the operations of the Mohawk Canoe Club, Inc.; and

3.   the domain name has been registered and is being used in bad faith.

--The panel in the Mohawk Canoe Club case, supra, clearly concluded that Complainant established with extrinsic proof that it has common law rights in the MOHAWK CANOE CLUB and MOHAWK CC marks.  Complainant has enjoyed long and continued use of the marks and showed that others identify with the Club sufficiently to establish that Complainant has rights in the marks under the common law.  See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000; see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001).

--The evidence shows that Respondent is not commonly known by the domain names. The Respondent has never made any showing of rights to or any legitimate interests in the disputed domain names.

--Moreover, Respondent’s diversionary use of the <mohawkcc.com> domain names does not constitute a bona fide offering of goods or services pursuant to the Policy and it is not a legitimate noncommercial or fair use pursuant to the Policy.

--Respondent has acted in bad faith.  Respondent continues to mislead the public by misappropriating the <mohawkcc.biz> domain names.  Respondent is knowingly misleading Internet users by using Complainant’s mark for Respondent’s own purposes.  Such use misleads Internet users into thinking that opinions given have the sponsorship of Complainant, an organization that has existed for more than a century. 

B. Respondent

--Respondent is incorporated in the State of New Jersey and provides global computer and networking services.

--Complainant is a “not for profit” canoe club. 

--Respondent currently uses the disputed domain names, <mohawk.cc>, <mohawkcci.com>, <mohawkcc.biz> and <mccshare.com>, to support its business and clients.

--Respondent does not believe it is in conflict with Complainant.  Respondent does not provide information that would confuse a computer and networking company and its customers with Complainant, a not for profit canoe club.

--Complainant has a vendetta against Respondent because of the way Respondent once voted when in Complainant’s organization.

--The three-character name “mcc” is a very common abbreviation and used in many domain names.  As of December 14, 2004, there were 12, 912 domain names that start with the letters “mcc.” 

--The abbreviation “cci” is common and can be found in over 5,000 domain names (Response Exhibit A4).

--The abbreviation “cc” can be found as an anchor in over 27,000 domain names.

--Complainant should not be able to use the generic top-level domain “.biz” because it is for business use.  Complainant should not be allowed to use the top-level domain “.net” because that should be for businesses related to networking.

--Complainant’s position that it owns domain names that start with the letters “mcc” or “Mohawk” represents an excessive reach and an attempt to hijack domain names owned by the Respondent and may possibly have a chilling impact on the business community in using the Internet for free commerce.

 

FINDINGS

Complainant, the Mohawk Canoe Club, Inc., is an organization located in Trenton, New Jersey that is over a century old. While not a business in the ordinary sense, Complainant does use its name to sell some merchandise and services connected with canoeing.

Respondent claims to run a business called the Mohawk Computer Company but there is no evidence that the Respondent is anything other than the individual George Fluck.  There also is no evidence of the many clients Respondent claims to service using the name Mohawk Computer Company.  

The four disputed domain names were registered on the following dates: <mohawkcc.biz> on February 1, 2004; <mohawkcci.com> on July 22, 2004; <mohawk.cc> on August 25, 2004; and <mccshare.com> on July 7, 2004.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical 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 domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant does not have a registered trademark for the MOHAWK or MOHAWK CANOE CLUB marks .  However, Complainant has demonstrated that for many years it has been using its name to sell items and services connected with the Mohawk Canoe Club. Complainant’s services include training people to paddle a canoe (Complaint Exhibit A).  In the Panel’s view, this does give Complainant common law trademark rights in the New Jersey, Pennsylvania and New York area where the Complainant sells its goods and services.  Common law trademark rights are often recognized in Policy decisions, and in the June 15, 2004 Mohawk Canoe Club decision, supra, which involved the same parties and almost identical facts as here, the panel found that Complainant had established common law trademark rights in the name MOHAWK CANOE CLUB.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that a store that rented tuxedos had developed common law trademark rights in its name through 43 years of trade in North Bergen, New Jersey).

Three of the disputed domain names prominently feature Complainant’s MOHAWK trademark, i.e., the distinctive part of Complainant’s MOHAWK CANOE CLUB mark.  These are: <mohawkcc.biz>, <mohawkcci.com>, and <mohawk.cc>.  Both <mohawkcc.biz> and <mohawkcci.com> are confusingly similar to Complainant’s MOHAWK trademark because their predominant component is the term “mohawk,” and because the letters “cc” suggest the rest of Complainant’s name, viz., Canoe Club.

The disputed domain name <mohawk.cc>, on the other hand, is identical to the Complainant’s MOHAWK trademark.  The Panel thus finds that Complainant has carried its burden of proof to show that the three disputed domain names, <mohawkcc.biz>, <mohawkcci.com> and <mohawk.cc> are identical or confusingly similar to a trademark, MOHAWK, in which the Complainant has rights.

As to the fourth disputed domain name, <mccshare.com>, the Panel does not find it is identical or confusingly similar to Complainant’s MOHAWK or MOHAWK CANOE CLUB common law trademarks.  While it is true that connecting the first three letters of the Complainant’s name would yield “mcc,” Complainant has not shown that it is known as “mcc.”  Even if it were, the next word “share” seems to have nothing to do with Complainant.  In sum, the Panel believes the chances are remote that the public would find that the disputed domain name, <mccshare.com>, has anything to do with Complainant. 

The Panel finds Complainant has failed to carry its burden of proof under paragraph 4(a)(i) of the Policy with respect to the <mccshare.com> domain name.  Since Complainant is required to prove all three paragraphs of the Policy at 4(a)(i-iii) with respect to each disputed domain name, the Panel does not need to refer to the <mccshare.com> domain name for the remainder of this discussion.    

 Rights or Legitimate Interests

Complainant asserts Respondent is not known by the disputed domain names and that Respondent’s only purpose in registering them was to pursue a vendetta against Complainant.  Respondent admits that it was in the recent past a member of Complainant’s organization and that there was some kind of a dispute.

Respondent claims it is using the disputed domain names to conduct a computer consulting business.  If true and done in good faith before notice of this dispute, Respondent would be entitled to use the disputed domain names because it would have shown rights and legitimate interests under Policy paragraph 4(c)(i). 

However, Respondent has merely narrated a story about a computer business it says it is running.  There is no proof at all that this business exists in the real world and is known as Mohawk Computer Company, still less that it existed prior to this dispute.  It looks as though Respondent made up this story for the purpose of this proceeding.

The Panel thus finds that Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy to show Respondent has no rights or legitimate interests in the <mohawkcc.biz>, <mohawkcci.com> and <mohawk.cc> domain names.   

Registration and Use in Bad Faith

Complainant contends that Respondent registered the disputed domain names because Respondent is a former, disgruntled member of Complainant’s organization seeking revenge.  In this regard, the Panel notes that Respondent registered a number of names quite close to Complainant’s MOHAWK CANOE CLUB trademark.  The Panel believes Respondent’s intention is both to deprive Complainant of the possibility of using the disputed domain names and, if possible, to disrupt Complainant’s activities.  In general, Respondent wants to be a thorn in the side of Complainant.  In the Panel’s view, Respondent’s conduct violates the bad faith provisions of two separate paragraphs of the Policy.

First, Respondent has violated paragraph 4(b)(ii) because it registered names it hoped Complainant would notice and want because they meshed with Complainant’s MOHAWK CANOE CLUB trademark.  The need for a pattern of conduct is satisfied because Respondent registered three names that were identical or confusingly similar plus a fourth name in the previous National Arbitration Forum Mohawk Canoe Club decision, supra, Respondent lost to Complainant in June 2004.

Second, Respondent intended to disrupt Complainant’s activities by attempting to draw attention from Complainant to Respondent.  Respondent wanted to make it difficult for Complainant’s members or other interested parties to contact or find Complainant on the Internet.  This violates the Policy bad faith provisions at paragraph 4(b)(iii).  Even though Respondent claims to be using the disputed domain names to sell computer services, Respondent is using a Mohawk canoe as a logo, and Respondent claims to be active in other canoeing organizations.  The Panel believes Respondent is a competitor of Complainant because Respondent wants to weaken Complainant in favor of other, similar canoeing organizations where Respondent still is persona grata.  This comports with the definition of competitor prevailing in Policy decisions as “one who acts in opposition to another.”  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000); see also Toronto Dominion Bank v. Karpacher, D2000-1571, (WIPO Jan. 15, 2001).

  

The Panel finds Complainant has carried its burden of proof to show Respondent registered and is using the disputed domain names in bad faith. 

DECISION

Having established all three elements required under the ICANN Policy with respect to the <mohawkcc.biz>, <mohawkcci.com> and <mohawk.cc> domain names, the Panel concludes that relief shall be GRANTED in part.

Accordingly, it is Ordered that the <mohawkcc.biz>, <mohawkcci.com>, and <mohawk.cc> domain names be TRANSFERRED from Respondent to Complainant.

As to the <mccshare.com> domain name, the Complaint is DENIED.

Dennis A. Foster, Panelist
Dated:  January 18, 2005

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