Cookie Munchers LLC v. Henry Fernandez
Claim Number: FA2109001962308
Complainant is Cookie Munchers LLC (“Complainant”), represented by Lara A. Holzman of Culhane Meadows PLLC, Texas, USA. Respondent is Henry Fernandez (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cookiemunchers.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2021; the Forum received payment on September 2, 2021.
On September 3, 2021, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <cookiemunchers.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 September 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@cookiemunchers.com. Also on September 7, 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 September 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Cookie Munchers LLC, sells and delivers baked goods and other food. Complainant has rights in the COOKIE MUNCHERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 6,094,715, registered July 7, 2020). See Compl. Ex. D.
It appears that the disputed domain name was first registered on August 4, 2004, but Complainant contends that Respondent acquired it around April 2021.
The <cookiemunchers.com> domain name is confusingly similar to Complainant’s COOKIE MUNCHERS mark since it incorporates the entire mark, appending only the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cookiemunchers.com> domain name as it is not affiliated with Complainant or otherwise licensed to use the COOKIE MUNCHERS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent has misled consumers and diverted Internet traffic to a competing website and has offered the domain name for sale.
Respondent registered and uses the <cookiemunchers.com> domain name in bad faith. Respondent offers the domain name for sale in excess of its out-of-pocket costs. Respondent also falsely affiliates itself with Complainant to divert business to a competing website. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COOKIE MUNCHERS mark and hence in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that sells and delivers baked goods and other food.
2. Complainant has established its trademark rights in the COOKIE MUNCHERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 6,094,715, registered July 7, 2020).
3. The disputed domain name was created on or about August 4, 2004 but it appears that the Respondent acquired the disputed domain name around April 2021.
4. Respondent has used the domain name to mislead consumers and to divert Internet traffic to a competing website and it has also offered the domain name for sale.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the COOKIE MUNCHERS mark through its registration of the mark with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration of the mark with the USPTO (e.g. Reg. 6,094,715, registered July 7, 2020). See Compl. Ex. D. Therefore, the Panel finds Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s COOKIE MUNCHERS mark. Complainant argues that Respondent’s <cookiemunchers.com> domain name is confusingly similar to Complainant’s COOKIE MUNCHERS mark since it incorporates the entire mark, appending only the “.com” gTLD. Addition of a gTLD is irrelevant to confusing similarity between a domain name and the mark it incorporates per Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s COOKIE MUNCHERS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s COOKIE MUNCHERS trademark and to use it in its domain name;
(b) The disputed domain name was created on or about August 4, 2004 but it appears that the Respondent acquired the disputed domain name around April 2021;
(c) Respondent has used the domain name to mislead consumers and to divert Internet traffic to a competing website and it has also offered the domain name for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent lacks rights and legitimate interests in the <cookiemunchers.com> domain name as it is not affiliated with Complainant or otherwise licensed to use the COOKIE MUNCHERS mark. Lack of authorization to use a mark, along with conflicting WHOIS information, may suggest that a Respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant as “Henry Fernandez” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the BLANCO mark in the disputed domain name. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <cookiemunchers.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use but instead diverts Internet traffic to a competing website and offers the domain name for sale. Use of a disputed domain name to redirect Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Offering a domain name for sale also suggests a lack of rights and legitimate interests. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots of Respondent’s competing webpage as well as an email chain in which Respondent offers the domain name for sale for a percentage of Complainant’s sales or $39,995.00 plus attorney’s fees. See Compl. Exs. B & O. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <cookiemunchers.com> domain name in bad faith since Respondent offers the domain name for sale in excess of out-of-pocket costs. Offering a disputed domain name for sale for significantly more than the costs associated with registration and maintenance may evidence bad faith per Policy ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides screenshots of Respondent’s competing webpage as well as an email chain in which Respondent offers the domain name for sale for a percentage of Complainant’s sales or $39,995.00 plus attorney’s fees. See Compl. Ex. O. Thus, the Panel finds bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent registered and uses the <cookiemunchers.com> domain name in bad faith since Respondent falsely affiliates itself with Complainant to divert business to a competing website. Use of a disputed domain name to redirect Internet traffic and compete with a complainant is evidence of bad faith disruption of business pursuant to Policy ¶ 4(b)(iii) and bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted above, Complainant provides screenshots of Respondent’s competing webpage See Compl. Ex. B. It also notes that it received multiple complaints from consumers who believed Respondent was associated with Complainant. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant claims that Respondent registered the <cookiemunchers.com> domain name with actual knowledge of Complainant’s rights in the COOKIE MUNCHERS mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the entirety of circumstances surrounding registration and use of a disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant notes that Respondent is located approximately a half-mile from Complainant’s flagship location and had been in communications with Complainant prior to purchasing the disputed domain name. See Compl. Ex. J. As the Panel agrees that actual knowledge is present, it finds bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cookiemunchers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 29, 2021
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