Pleasant Hill Farm, Inc. v. Keyword Marketing, Inc.
Claim Number: FA0706001007970
Complainant is Pleasant Hill Farm, Inc. (“Complainant”), represented by Andrew
Willis, of Cline, Williams, Wright, Johnson & Oldfather,
LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <plesanthillgrain.com>, registered with Capitoldomains, 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.
Tyrus R, Atkinson, Jr,. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2007.
On June 13, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <plesanthillgrain.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 June 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 2007 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@plesanthillgrain.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R, Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <plesanthillgrain.com> domain name is confusingly similar to Complainant’s PLEASANT HILL GRAIN mark.
2. Respondent does not have any rights or legitimate interests in the <plesanthillgrain.com> domain name.
3. Respondent registered and used the <plesanthillgrain.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pleasant Hill Farm, Inc., holds a registered service mark with the United States Patent and Trademark Office (“USPTO”) for the PLEASANT HILL GRAIN mark (Reg. No. 3,057,844 issued February 7, 2006). Complainant has used the PLEASANT HILL GRAIN mark in connection with its online retail store that sells appliances, including kitchen appliances, small-to-medium-sized commercial grain mills, commercial kitchen equipment and dehydrators. Complainant has registered the <pleasanthillgrain.com> domain name, which it uses to host its online retail store to sell appliance goods and services.
Respondent registered the <plesanthillgrain.com> domain name on October 21, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to competing websites selling mixers and grain mills, which compete with those goods and services offered by Complainant under the PLEASANT HILL GRAIN mark. Additionally, Respondent has been involved in at least six other cases as the respondent where the domain names were transferred to the complainant, including Enterprise Rent-A-Car Co. v. Keyword Marketing, Inc., FA 918604 (Nat. Arb. Forum Mar. 28, 2007), American Psychological Association v. Keyword Marketing, Inc., FA 912458 (Nat. Arb. Forum Mar. 22, 2007) and Metropolitan Life Insurance Co. v. Keyword Marketing, Inc., FA 874259 (Nat. Arb. Forum Feb. 6, 2007).
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the PLEASANT HILL
GRAIN mark under Policy ¶ 4(a)(i) through registration of the mark with the
USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <plesanthillgrain.com> domain name is
confusingly similar to Complainant’s PLEASANT HILL GRAIN mark as it uses the
mark in its entirety but uses the common misspelling “plesent” for the word
“pleasant,” which simply omits the “a” from Complainant’s mark. Additionally, Respondent’s disputed domain
name is nearly identical to Complainant’s <pleasanthillgrain.com> domain
name, which adds to the confusion. The
Panel finds that the mere omission of the “a” from the word “pleasant” does not
sufficiently distinguish the disputed domain name from the mark under Policy ¶
4(a)(i). See State Farm Mut. Auto.
Ins. Co. v. Try Harder &
Additionally, Respondent’s <plesanthillgrain.com> domain name is
confusingly similar to Complainant’s PLEASANT HILL GRAIN mark as it sounds
phonetically identical. The Panel finds
that the phonetic similarity between the disputed domain name and mark satisfy
Policy ¶ 4(a)(i). See Hewlett-Packard
Co. v.
Finally, Respondent has added the generic top-level domain (“gTLD”) “.com” to the mark. In line with previous panels, the Panel holds that the addition of a gTLD, like “.com,” is not relevant to determining whether a domain name is confusingly similar to a mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is…without legal significance since use of a gTLD is required of domain name registrants….”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <plesanthillgrain.com> domain name. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Caterpillar Inc. v. Ravo, FA 991824 (Nat. Arb. Forum July 9, 2007) (“Complainant having made a prima facie case that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent to show he does have rights or legitimate interests.”).
The Panel may assume that Respondent has no rights or
legitimate interests here because Respondent failed to respond to the
Complaint. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the complaint); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will review all evidence before determining whether
Respondent has rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant contends that
Respondent is using the <plesanthillgrain.com>
domain name to redirect Internet users to
Respondent’s website displaying links to third-party websites that offer goods
and services competing with those offered by Complainant under the PLEASANT
HILL GRAIN mark. The Panel finds that
Respondent’s use of the <plesanthillgrain.com>
domain name to display links to websites in competition with Complainant is not
a use in connection with 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). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites 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) because the registrant presumably receives compensation for each
misdirected Internet user).
Additionally, Respondent offers no evidence and there is no evidence present in the record to indicate that Respondent is commonly known by the <plesanthillgrain.com> domain name. Respondent’s WHOIS information identifies Respondent as “Keyword Marketing, Inc.,” which bears no resemblance to the disputed domain name. Therefore, the Panel finds that Respondent has failed to show rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name “girls gon wild” or <girlsgonwild.com>); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Finally, Respondent’s <plesanthillgrain.com>
domain name capitalizes on a common typographical error made by Internet users
who simply leave out the first “a” when attempting to type in Complainant’s
<pleasanthillgrain.com> domain name.
The Panel finds that such use constitutes typosquatting, which is
evidence in and of itself that Respondent lacks rights or legitimate interests
in the disputed domain name. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that
the respondent lacked rights and legitimate interests in the disputed
domain names because it “engaged in the practice of typosquatting
by taking advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <plesanthillgrain.com> domain name, which is confusingly similar to Complainant’s PLEASANT HILL GRAIN mark, to redirect Internet users to Respondent’s website displaying links to the websites of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name to offer links to competing websites constitutes disruption, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Additionally, Respondent is using the <plesanthillgrain.com> domain name to redirect Internet users to Respondent’s website displaying links to competing websites for the assumed profit of Respondent. The Panel finds that Internet users seeking Complainant’s goods and services offered at <pleasanthillgrain.com> may become confused as to Complainant’s affiliation with Respondent’s <plesanthillgrain.com> domain name. Presumably, Respondent is profiting from this confusion through click-through fees. Therefore, the Panel finds that such use by Respondent is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant further offers evidence showing that Respondent
has been involved in at least six other domain name disputes where the domain
names were transferred from Respondent to the complainant in each case. See, e.g., Enterprise Rent-A-Car Co. v.
Keyword Mktg., Inc., FA 918604 (Nat. Arb. Forum Mar. 28, 2007), Am.
Psychological Ass’n v. Keyword Mktg., Inc., FA 912458 (Nat. Arb. Forum Mar.
22, 2007) and Metro. Life Ins. Co. v. Keyword Mktg., Inc., FA 874259
(Nat. Arb. Forum Feb. 6, 2007). The
Panel finds that Respondent’s pattern of registering infringing domain names is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki
Kaisha v. Anderson, FA 198809 (Nat. Arb.
Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad
faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered
domain names incorporating well-known third party trademarks); see also Société
Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of
“numerous other domain names” by the respondent).
Finally, Respondent’s <plesanthillgrain.com> domain name,
which omits the “a” from the word “pleasant,” is merely a typosquatted version
of Complainant’s PLEASANT HILL GRAIN mark.
The Panel finds that Respondent is capitalizing on a common typographical
error made by Internet users searching for Complainant’s goods and services at the
<pleasanthillgrain.com> domain name.
Therefore, the Panel concludes that Respondent’s registration of the
typosquatted domain name is further evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that
the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plesanthillgrain.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 25, 2007
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