Sauer Brands, Inc. v. saran saadet
Claim Number: FA2101001929388
Complainant is Sauer Brands, Inc. (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is saran saadet (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dukesitsgottwang.com>, registered with Dynadot, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2021; the Forum received payment on January 22, 2021.
On January 25, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <dukesitsgottwang.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 January 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dukesitsgottwang.com. Also on January 26, 2021, 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 February 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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" 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a well-known company that manufactures and sells a variety of food products to consumers throughout the United States. Complainant’s most well-known brands are its famous DUKE’S marks, which Complainant and its predecessors have owned and used since at least 1917 to promote and sell a variety of food products, including but not limited to mayonnaise, sandwich relish, dressings, and other sauces/dips. Over the last century, Complainant has worked assiduously to grow DUKE’S from a regional brand into the nationally recognized brand it is today. Considered by its fans to be synonymous with southern tradition, Complainant’s DUKE’S marks regularly receive unpaid media coverage, are touted by chefs as an essential ingredient (over even those that are homemade), and have inspired consumer devotion that is often described as a “cult-like following.” This consumer recognition manifests itself frequently through organic social media posts about the DUKE’S brand as well as consumer creation of fan art, costumes, and needlepoints depicting the DUKE’S marks. Complainant has rights in the DUKE’S mark based on registration of the mark in the United States Patent in 1962. Complainant also has rights in the DUKE’S IT’S GOT TWANG! mark based on a pending registration application filed on July 17, 2020. Complainant uses its DUKE’S IT’S GOT TWANG! mark in tandem with the DUKE’S marks to promote and sell its products in a variety of ways. For example, Complainant uses the DUKE’S IT’S GOT TWANG mark in television commercials and online advertising. Similar to Complainant’s famous DUKE’S marks, Complainant’s DUKE’S IT’S GOT TWANG! mark has garnered significant media attention, resulting in articles being published about Complainant’s latest addition to its DUKE’S family of marks.
Complainant alleges that the disputed domain name is confusingly similar to its DUKE’S mark as it incorporates the mark (minus the apostrophe) and merely adds the terms “it’s got twang”, which describe Complainant’s products. The disputed domain name is also virtually identical to Complainant’s DUKE’S IT’S GOT TWANG! mark, as it simply omits the exclamation point and adds the “.com” generic top level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed Respondent to use the DUKE’S or DUKE’S IT’S GOT TWANG! marks. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offers the domain name for sale. Respondent registered the disputed domain name on July 21, 2020—just four days after Complainant filed an application to register its DUKE’S IT’S GOT TWANG! mark. Despite owning the disputed domain name for six months, Respondent has not used it to host active webpages or for any other legitimate purpose, but instead has at all times directed the disputed domain name to a webpage stating that the domain is “for sale” for a price well in excess of out-of-pocket costs. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale. Based on the timing, Respondent’s lack of use, and the fact that the disputed domain name so mimics Complainant’s DUKE’S and DUKE’S IT’S GOT TWANG! marks, there is no question that Respondent registered the disputed domain name with full knowledge of Complainant’s rights and in a bad faith attempt to profit from the domain name, either through the sale of the domain name at an inflated price or eventually through misdirected consumer internet traffic. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark DUKE’S and uses it to market a variety of food products.
Complainant’s rights in its DUKE’S marks date back to at least 1962. Complainant applied for registration of the mark DUKE’S IT’S GOT TWANG! on July 17, 2020.
The disputed domain name was registered on July 21, 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name resolves to a web site that offers it for sale at a price well in excess of out-of-pocket costs.
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:
(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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The disputed domain name incorporates Complainant’s DUKE’S mark (minus the apostrophe) and merely adds the terms “it’s got twang”, which Complainant uses to promote its products. It is well established under the Policy that punctuation cannot be considered when comparing a mark with a domain name, in particular with respect to symbols such as apostrophes that are not allowed in domain names. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). It is also well established that the addition of descriptive/generic terms to a mark is not sufficient to distinguish, in the sense of the Policy, a domain name from a mark, in particular when the descriptive terms relate to a complainant’s business. See Amazon Technologies, Inc. v. Arbiyani, FA1665621 (Forum Apr. 16, 2016) (finding <amazonindiafashion.com> confusingly similar to the AMAZON mark); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information identifies “saran saadet” as the registrant. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Respondent offers the disputed domain name for sale for a price well in excess of out-of-pocket costs: Complainant provides a screenshot showing the disputed domain name resolves to a parked page which lists the domain as for sale for a price of $988. An offer to sell a disputed domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs. Under Policy ¶ 4(b)(i), a general offer to sell a disputed domain name indicates bad faith registration and use if the respondent intended to make such an offer when registering the domain. See Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the disputed domain name clearly refers to the products that Complainant markets as “Duke’s: it’s got twang” and Complainant filed an application for the mark DUKE’S IT’S GOT TWANG! four days before the registration of the disputed domain name. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dukesitsgottwang.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 22, 2021
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