Dot Foods, Inc. v. Andrew Cole
Claim Number: FA1910001867427
Complainant is Dot Foods, Inc. (“Complainant”), represented by Caroline Chicoine of HUSCH BLACKWELL LLP, Missouri, USA. Respondent is Andrew Cole (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dotfoodsinc.com>, registered with Mesh Digital Limited.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2019; the Forum received payment on October 18, 2019.
On October 21, 2019, Mesh Digital Limited confirmed by e-mail to the Forum that the <dotfoodsinc.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2019, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@dotfoodsinc.com. Also, on October 22, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, doing business under the mark DOT FOODS, is the largest food industry redistributor in North America.
Complainant holds a registration for the DOT FOODS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,367,711, registered as of January 2, 2018, its application for mark registration having been duly filed on November 10, 2016.
Complainant also has common law rights in the DOT FOODS mark dating from as early as 1980.
Respondent registered the domain name <dotfoodsinc.com> on or about May 25, 2017.
The domain name is confusingly similar to Complainant’s DOT FOODS mark.
Respondent is not licensed or otherwise permitted to use Complainant’s DOT FOODS mark.
Respondent has not been commonly known by the domain name.
Respondent has not used the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to redirect Internet users to Complainant’s official website in an effort to create a false impression of an affiliation with Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name threatens to disrupt Complainant’s business.
Respondent intends to employ the domain name to acquire commercial gain.
Respondent knew of Complainant’s rights in the DOT FOODS mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the DOT FOODS service mark, sufficient for purposes of Policy ¶ 4(a)(i), by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here South Africa). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Having concluded that Complainant has rights in its DOT FOODS service mark, we are nonetheless mindful that Complainant’s mark was registered as of January 2, 2018, whereas the record shows that Respondent registered its <dotfoodsinc.com> domain name earlier, on May 25, 2017. In ordinary circumstances, Respondent’s earlier registration of the domain name would give Respondent time priority senior to those of Complainant. However, in the case before us, it appears that Complainant’s application for registration of the DOT FOODS mark was filed on November 10, 2016, more than six months before Respondent’s registration of the domain name. Because it is well-established that time priority as to the parties’ respective rights is measured in such cases from the date of Complainant’s mark application filing, Complainant has adequately demonstrated its standing to bring the instant Complaint. See, for example, Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum April 9, 2018):
The relevant date for acquiring rights in a registered mark is the [registration] application filing date.
To the same effect, see also Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015):
Trademark protection extends back to the application filing date of a registered mark.
Turning, then, to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <dotfoodsinc.com> domain name is confusingly similar to Complainant’s DOT FOODS service mark. The domain name incorporates the mark in its entirety, merely deleting the space between its terms and adding the descriptive term “inc,” which identifies Complainant’s form of business organization, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services [offered] in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy¶4(a)(i).
And, as to Respondent’s elimination of the space between the terms of Complainant’s mark in creating the domain name, we note that domain name syntax does not permit the use of blank spaces in forming domain names.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <dotfoodsinc.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <dotfoodsinc.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the DOT FOODS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Andrew Cole,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP complainant’s mark). See also Navistar International Corp. v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to use its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <dotfoodsinc.com> domain name to redirect users to Complainant’s official website in an effort to create a false impression of an affiliation with Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum August 21, 2017):
Respondent uses the domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <dotfoodsinc.com> domain name, which we have concluded is confusingly similar to Complainant’s DOT FOODS service mark, is an attempt by Respondent to create confusion among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See MySpace, Inc. v. Gomez, D2007-1231 (WIPO October 17, 2007) (finding bad faith where registration and use of a domain name where:
Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.
We are also convinced by the evidence that Respondent knew of Complainant and its DOT FOODS mark when the <dotfoodsinc.com> domain name was registered. This further illustrates Respondent’s bad faith in registering it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration of a domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dotfoodsinc.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 26, 2019
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