Jelly Belly Candy Company v. Aaron Peavy
Claim Number: FA0709001082271
Complainant is Jelly Belly Candy Company (“Complainant”), represented by Nicolas
S. Gold, of Law Offices of James R. Cypher,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportsbeans.com>, registered with Godaddy.com, Inc.
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.
Roberto A Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2007.
On September 27, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sportsbeans.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 22, 2007.
No Additional Submissions were received from the parties.
On October 26, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends the following:
- The domain name <sportsbeans.com> includes the whole of the trademark SPORT BEANS, adding only an “S” to make “SPORT” plural. Respondent registered the domain name <sportsbeans.com> on June 16, 2005, after Complainant filed its “SPORT BEAN” trademark application.
- Respondent should be considered as having no rights or legitimate interests in respect of the domain name.
- The domain name should be considered as having been registered and being used in bad faith. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Respondent is using the domain name <sportsbeans.com> to advertise a range of goods and services including those of Complainant, and to provide links to a range of Internet sites, including that of Complainant to a public that will likely be misled into assuming that <sportsbeans.com> is a Web site of Complainant.
Respondent contends as follows:
- Respondent registered the domain along with numerous other domains on July 16, 2006, not on the asserted date of June 16, 2005, by merely buying a domain name that had expired, wishing to leverage the existing traffic that it produced. Respondent is not affiliated with nor is it in bad faith that he advertises any good or services on the domain’s site. The links contained on the site are no more mala fide than if you did a Google search on the words “Sports Beans.” The site that Respondent hosts uses the Google adwords program to determine the advertisements based on the keywords in the domain name, which is completely out of Respondent’s control. Taking into consideration the above facts, it is preposterous to make the assertion that Respondent has intentionally or in bad faith hurt or tarnished the name or trademark of the complainant.
- Respondent has not advertised the domain in any way, shape or form since he purchased it; therefore, the assertion that Respondent is intentionally trying to disrupt traffic to Complainant’s site is made in that false assumption. If anything, by hosting the site and continuing its existence, Respondent has probably sent business to Complainant’s site that would have otherwise been lost or redirected to another less desirable vendor (like offshore pharmaceuticals or pornography, which would definitely tarnish the trademark).
- The Complaint is based in pure fiction and seeks to force a resolution based on false assumptions. Respondent’s purchase and use of the domain name was based on purely quantitative methods that analyzed its existing traffic and was never intended to harm or mislead anybody. As stated to Complainant’s representation when Respondent was first contacted, he is full willing to part with the domain. All Respondent asks is getting compensated for what he paid for the domain name: $60 original price plus the $29 administrative fee that was charged when GoDaddy.com was contacted by Complainant’s representative. Respondent is not in the business of trying to fleece anybody and continues to try to be fair about his dealings with Complainant.
The disputed domain name is an obvious mistyping of, and therefore, is found to be confusingly similar to Complainant’s mark. While Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the domain name, Respondent does not present any evidence that he does have some rights or legitimate interests in <sportsbeans.com>.
Respondent’s website under the disputed domain name contains links to Complainant’s web site, as well as several links to commercial web sites. This was found by the Panel to be evidence or registration and use in bad faith of the domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 submitted satisfactory evidence that it owns U.S. federal trademark rights in the SPORT BEANS mark, Reg. No. 3,264,316, registered July 17, 2007, filed May 13, 2005, covering dietary supplement, namely fortified jell beans, and candy, namely jelly beans, in classes 5 and 30, respectively. Although Complainant’s registration date for this mark postdates Respondent’s registration of the <sportsbeans.com> domain name, Complainant’s filing for its mark predates Respondent’s registration of the domain name in dispute. Accordingly, the Panel finds that Complainant’s rights date back to its USPTO filing date. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant’s mark and the disputed domain name differ only in that a letter “S” has been added to the “SPORT” word, and that the space between “SPORTS” and “BEANS” is missing in the domain name. These minor differences are inapt to distinguish the domain name from the mark. See Fannie May Confections, Inc. v. Domain Contact 2, D2006-0813 (WIPO Sept. 26, 2006), (stating that it is well accepted that the addition of an “s” to the mark does not avoid a finding of confusing similarity); see also Grant Thornton Int’l v. Schmitz, D2006-1085 (WIPO Nov. 30, 2006), (stating that it is commonly known that technically the letters in domain names cannot be separated by spaces, so many companies that have trade names or trademarks that consist of two or more words, use them as domain names without spaces in between).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant contends that Respondent’s use of the domain name and a name corresponding to the domain name is in connection with a mala fide offering of goods, that Respondent has neither been commonly known by the domain name nor acquired trademark or service mark rights, and that Respondent is making an illegitimate commercial use of the domain name, with intent for commercial gain to misleadingly divert consumers and to tarnish the trademarks at issue. These contentions by Complainant amount to a prima facie case that Respondent lacks rights or legitimate interests in the domain name. This shifts the burden to Respondent to show rights or legitimate interests. See Mattel, Inc. v. Yesbarbie, FA 114754 (Nat. Arb. Forum Sept. 12, 2002).
For his part, Respondent says that he simply bought a domain name that had expired, wishing to leverage the existing traffic that it produced. He does not deny that he is not known by the domain name, and states that when he bought the domain name, it was producing some interesting traffic. The Panel does not believe that this by itself is sufficient ground for asserting rights or legitimate interest in a domain name. Further, Respondent contends that the advertisements appearing on the web site at the domain name are not in bad faith, and that the links contained “are no more mala fide than if you did a Google search on the words ‘Sports Beans.’” Respondent adds that he uses the “Google adwords program” to determine the advertisements based on the keywords in the domain name, which is completely out of Respondent’s control.
The Panel cannot agree with Mr. Peavy. He knowingly registered a domain name which - according with his own words - was generating traffic, without mentioning that such traffic must most likely have been produced because “SPORTSBEANS” is an obvious mistyping of Complainant’s mark “SPORTBEANS.” He knew - or at least he should have known - that “the Google adwords program” is being used to place such advertisements.
It is clear that Respondent agreed that the web site’s only content would consist in links and advertisements – i.e. a commercial activity - posted automatically or otherwise with the purpose of extracting a profit from the domain name’s traffic, from which profit Respondent would extract a share. Respondent cannot allege that he does not control which ads are being posted on his web site under the domain name. See Caterpillar Inc. v. Ravo, FA 991824 (Nat. Arb. Forum, July 9, 2007) (rejecting the respondent’s argument that he could not control web content, since it was his exclusive decision to cause his domain name to generate revenue from the visits of Internet users looking for the complainant’s mark and website, on a pay-per-click basis, while he most likely receives a share of the resulting profits).
Thus, the domain name was used neither in connection with a bona fide offering of goods or services, nor without intent for commercial gain to misleadingly divert consumers looking for Complainant’s web site and mark.
As Respondent does not present any evidence against Complainant’s prima facie case that Respondent lack rights or legitimate interests in the domain name, the Panel concludes that the second requirement of the Policy is met.
explains that it began publicizing the SPORT BEANS product in May 2005 in
preparation for the 2005 All Candy Expo, held at
Respondent does not deny any of these contentions. Nor does he assert that he was unaware of Complainant’s SPORT BEANS mark and products at the time of registering the domain name. Respondent does not even suggest that he might have registered the disputed domain name because it contains dictionary or generic words (although the Panel believes that their combination is uncommon).
Furthermore, the website under the domain name contains a link to Complainant’s <sportbeans.com> web site, as well as several other links to web sites of a commercial nature, more or less related to “beans.” This shows that Respondent is using the <sportsbeans.com> domain name, an obvious mistyping of Complainant’s mark, on a “pay-per-click” basis, i.e. with a commercial purpose.
In the present circumstances, using a web site to post “pay-per-click” advertisements is an evidence of registration and use in bad faith according to Policy ¶ 4(b)(iv) (“[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”). See Express Scripts, Inc. v Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The Respondent contends that the advertisements in this case were “generated by the parking company”. The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel’s view this makes no difference. The Respondent placed the Domain Name with a parking company in circumstances where it would have been aware that those using the Domain Name were likely to have mistyped the Complainant’s name.”).
The third requirement of the Policy is thus met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sportsbeans.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: November 9, 2007
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