Scarlet Tanager LLC v. Traverito Traverito
Claim Number: FA0707001042519
Complainant is Scarlet Tanager LLC (“Complainant”), represented by Candace
Lynn Bell, of Kavinoky Cook, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <henryfield.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2007.
On July 24, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <henryfield.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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@henryfield.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <henryfield.com> domain name is identical to Complainant’s HENRY FIELD mark.
2. Respondent does not have any rights or legitimate interests in the <henryfield.com> domain name.
3. Respondent registered and used the <henryfield.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Scarlet Tanager LLC, is a world-wide distributor of seeds and other gardening supplies. Complainant has marketed and distributed its gardening materials under the HENRY FIELD’S mark since 1892. Complainant holds trademarks with the United States Patent and Trademark Office (“USPTO”), including the HENRY’S FIELD mark (Reg. No. 934,186 issued May 16, 1972) and the HENRY FIELD mark (Reg. No. 2,124,884 issued December 30, 1997). Furthermore, Respondent operates a website at the <henryfields.com> domain name.
Respondent registered the <henryfield.com> domain name on October 12, 2000. Respondent’s disputed domain name resolves to a website which displays various sponsored hyperlinks for third-party websites, some of which are in direct competition with Complainant. Moreover, Respondent has been the respondent in several other UDRP decisions in which the disputed domain name was transferred from Respondent to the respective complainants. See Plain 'N Fancy Kitchens, Inc. v Traverito Traverito, FA 964328 (Nat. Arb. Forum May 31, 2007); see also Carey International, Inc. v Traverito Traverito, FA 994123 (Nat. Arb. Forum July 16, 2007); see also American International Group, Inc. v Traverito Traverito, FA 1011737 (Nat. Arb. Forum July 30, 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.
The Panel finds that Complainant has sufficiently
established its rights in the HENRY FIELD mark through its 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 U.S.
Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
Furthermore, the Panel finds that
the <henryfield.com> domain name is identical to
Complainant’s mark, as it merely eliminates the space between the terms. Also, the addition of the top-level domain
“.com” does nothing to render the disputed domain name unique, as a top-level
domain is a requirement for all domain names.
See Croatia Airlines v. Kwen
Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES
trademark); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES).
Accordingly, the Panel finds that the disputed domain name is identical
to Complainant’s mark.
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant must first establish that Respondent lack rights and legitimate interests in the <henryfield.com> domain name in order to establish a prima facie case. However, once a prima facie case has been established, the burden of proof shifts to Respondent, who must prove that it has rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds Complainant has presented a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s <henryfield.com> domain name resolves
to a website that displays hyperlinks for a number of third-party websites,
some of which are in direct competition with Complainant, as well as a search
engine. The Panel presumes that Respondent
is using the disputed domain name to earn click-through fees, and thus finds
that Respondent is not making a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy 4(c)(iii). See
Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (holding that the respondent’s use of
“confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or
services); see also WeddingChannel.com Inc. v. Vasiliev, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or
services as contemplated by the Policy).
Respondent’s WHOIS information does not indicate, and the
record does not suggest, that Respondent is commonly known by the <henryfield.com>
domain name. Furthermore, there is
unrefuted evidence put forth by Complainant that Respondent is neither
authorized nor licensed to use Complainant’s HENRY FIELD mark in any way. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy
4(a)(ii) has been satisfied.
Based on the uncontroverted evidence presented by Complainant, the Panel finds that Respondent receives click-through fees for the hyperlinks displayed on the website that resolves from the <henryfield.com> domain name. Also, the Panel finds that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and corresponding website. To commercially benefit from such use constitutes bad faith registration and use under 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.”).
Respondent has been the respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See Plain 'N Fancy Kitchens, Inc. v Traverito Traverito, FA 964328 (Nat. Arb. Forum May 31, 2007); see also Carey International, Inc. v Traverito Traverito, FA 994123 (Nat. Arb. Forum July 16, 2007); see also American International Group, Inc. v Traverito Traverito, FA 1011737 (Nat. Arb. Forum July 30, 2007). Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii). See Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
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 <henryfield.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 4, 2007
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