Omaha Steaks International, Inc. v. Jan Jackson a/k/a
Dave Stern a/k/a Dave White a/k/a Nick Jackson a/k/a Jan Rogers a/k/a Nick
Spencer a/k/a Joe Rogers a/k/a Dave Jackson a/k/a Carla Stern a/k/a Carla White
a/k/a Joe Douglas a/k/a Dave Williams a/k/a Chris Hansen a/k/a Joe Stern a/k/a
Ted Jones a/k/a Carla Jones a/k/a Mike Spencer a/k/a Carla Williams a/k/a Ted
Hansen a/k/a Joe Hansen a/k/a Jen White a/k/a Nick Stern a/k/a Jen Jackson a/k/a
Jen Williams a/k/a Mike Rogers a/k/a Dave Spencer a/k/a Jen Stern a/k/a Mike
White a/k/a Ted Douglas a/k/a Carla Jackson a/k/a Joe Spencer
Claim Number: FA0801001141122
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>, <oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>, <omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>, <omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>, <omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>, <omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>, <omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>, <omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>, <omahastekas.com>, <omahastesks.com>, <omahastraks.com>, <omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>, <omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>, <omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>, <omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>, <owmahasteaks.com> and <pmahasteaks.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 30, 2008; the National Arbitration Forum received a hard copy of the Complaint January 30, 2008.
On January
30, 2008, Enom, Inc. confirmed by
e-mail to the National Arbitration Forum that the <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>,
<oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>,
<omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>,
<omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>,
<omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>,
<omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>,
<omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>,
<omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>,
<omahastekas.com>, <omahastesks.com>, <omahastraks.com>,
<omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>,
<omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>,
<omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>,
<omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>,
<owmahasteaks.com> and <pmahasteaks.com>
domain names are registered with Enom, Inc.
and that Respondent is the current registrant of the names. Enom, Inc.
verified that Respondent is bound by the Enom,
Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2008, 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@imahasteaks.com, postmaster@mahasteaks.com, postmaster@oahasteaks.com, postmaster@oamhasteaks.com, postmaster@omaahasteaks.com, postmaster@omaasteaks.com, postmaster@omagasteaks.com, postmaster@omahaasteaks.com, postmaster@omahaateaks.com, postmaster@omahadteaks.com, postmaster@omahaseaks.com, postmaster@omahasreaks.com, postmaster@omahassteaks.com, postmaster@omahasteaaks.com, postmaster@omahasteacs.com, postmaster@omahasteajs.com, postmaster@omahasteaka.com, postmaster@omahasteakd.com, postmaster@omahasteakks.com, postmaster@omahasteakss.com, postmaster@omahasteakz.com, postmaster@omahasteas.com, postmaster@omahasteask.com, postmaster@omahasteeaks.com, postmaster@omahastekas.com, postmaster@omahastesks.com, postmaster@omahastraks.com, postmaster@omahastteaks.com, postmaster@omahastwaks.com, postmaster@omahasyeaks.com, postmaster@omahhasteaks.com, postmaster@omahisteaks.com, postmaster@omahssteaks.com, postmaster@omajasteaks.com, postmaster@omihasteaks.com, postmaster@ommahasteaks.com, postmaster@omshasteaks.com, postmaster@onahasteaks.com, postmaster@oomahasteaks.com, postmaster@owmahasteaks.com and postmaster@pmahasteaks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The disputed domain names that Respondent registered, <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>, <oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>, <omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>, <omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>, <omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>, <omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>, <omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>, <omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>, <omahastekas.com>, <omahastesks.com>, <omahastraks.com>, <omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>, <omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>, <omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>, <omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>, <owmahasteaks.com> and <pmahasteaks.com> are confusingly similar to Complainant’s OMAHASTEAKS.COM mark.
2. Respondent has no rights to or legitimate interests in the <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>, <oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>, <omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>, <omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>, <omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>, <omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>, <omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>, <omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>, <omahastekas.com>, <omahastesks.com>, <omahastraks.com>, <omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>, <omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>, <omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>, <omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>, <owmahasteaks.com> and <pmahasteaks.com> domain names.
3. Respondent registered and used the <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>, <oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>, <omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>, <omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>, <omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>, <omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>, <omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>, <omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>, <omahastekas.com>, <omahastesks.com>, <omahastraks.com>, <omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>, <omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>, <omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>, <omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>, <owmahasteaks.com> and <pmahasteaks.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Omaha Steaks International, Inc., is a manufacturer, marketer and distributor of a wide variety of premium steaks, red meats and other gourmet foods. Complainant’s business was founded in 1917, and Complainant distributes its goods through foodservice, mail order, retail stores and other avenues. Complainant holds several registrations with the United States Patent and Trademark Office (“USPTO”), including for the OMAHA STEAKS and OMAHASTEAKS.COM marks (Reg. No. 1,515,602 issued December 6, 1988 and Reg. No. 2,414,603 issued December 19, 2000, respectively).
Respondent’s disputed domain names were registered November 24, 2003, December 11, 2003, and December 18, 2003. The disputed domain names resolve to Complainant’s website, in violation of Complainant’s affiliate program.
Preliminary Issue:
Multiple Respondents
The Panel first considers whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases. Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The disputed domain names all redirect Internet users to Complainant’s website. Moreover, the disputed domain names forward traffic through the same affiliate network account ID, as well as through a common URL. The WHOIS information for the disputed domain names is similar, including contact e-mail addresses at <sonarc.net>. Additionally, the disputed domain names were registered within a short time frame of each other. The Panel finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 sufficiently established
rights in the OMAHASTEAKS.COM mark for the purposes of Policy ¶ 4(a)(i) by virtue of its service mark registration with the
USPTO for the mark.
The Panel holds that all of the disputed domain names are
confusingly similar to Complainant’s OMAHASTEAKS.COM mark under Policy ¶ 4(a)(i), as each disputed domain name takes advantage of a
possible typing error by Internet users.
Each disputed domain name is a modification of Complainant’s mark either
through the addition of a character to the mark, the removal of a character
from the mark, an incorrect character or two juxtaposed characters. The Panel finds that none of these
modifications sufficiently distinguishes any of the disputed domain names from
Complainant’s mark under Policy ¶ 4(a)(i). See Guinness UDV N. Am., Inc. v.
Dallas Internet Servs., D2001-1055 (WIPO
Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar
to the complainant’s SMIRNOFF mark because merely removing the letter “f” from
the mark was insignificant); see also Marriott Int'l, Inc. v. Seocho,
FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's
<marrriott.com> domain name was confusingly similar to the complainant's
MARRIOTT mark); see also Neiman Marcus Group, Inc. v.
Party Night, Inc., FA 114546 (Nat. Arb.
Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Google Inc. v. Jon G., FA 106084
(Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly
similar to the complainant’s GOOGLE mark and noting that “[t]he transposition
of two letters does not create a distinct mark capable of overcoming a claim of
confusing similarity, as the result reflects a very probable typographical
error”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to present a prima facie case that Respondent lacks all rights and legitimate interests in the disputed domain names. If Complainant satisfies this burden, the burden then shifts to Respondent to demonstrate rights or legitimate interests with regards to each disputed domain name. The Panel determines that Complainant met its burden, and that since Respondent has not responded to the Complaint, the Panel is not required to conduct a further analysis. However, the Panel examines the evidence relative to Policy ¶ 4(c) before making a final determination. See 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
No evidence in the record indicates that Respondent has ever been commonly known by the disputed domain names, or authorized by Complainant to use Complainant’s OMAHASTEAKS.COM mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license).
Respondent has used the disputed domain names to redirect
Internet users to Complainant’s website, in order to obtain commercial gain
through click-through fees, in violation of Complainant’s affiliate agreement. The Panel finds that such use is not bona fide offering of goods or services
under Policy ¶ 4(c)(i) and that it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Sports
Additionally, the Panel finds that the disputed domain names are typosquatted versions of Complainant’s mark, which supports further findings that Respondent lacks rights to and legitimate interests under Policy ¶ 4(a)(ii). 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 Complainant satisfied Policy ¶ 4(a)(ii).
As discussed above, Respondent is violating its affiliate
agreement with Complainant by using the disputed domain names to redirect to
Complainant’s website for the earning of click-through fees. As the disputed domain names may cause
confusion as to Complainant’s association with them, the Panel finds that the
elements of Policy ¶ 4(b)(iv) have been
satisfied. See Deluxe Corp.
v.
Additionally, the typosquatted nature of the disputed domain
names indicates 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 Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)).
The Panel finds that Complainant satisfied 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 <imahasteaks.com>, <mahasteaks.com>, <oahasteaks.com>, <oamhasteaks.com>, <omaahasteaks.com>, <omaasteaks.com>, <omagasteaks.com>, <omahaasteaks.com>, <omahaateaks.com>, <omahadteaks.com>, <omahaseaks.com>, <omahasreaks.com>, <omahassteaks.com>, <omahasteaaks.com>, <omahasteacs.com>, <omahasteajs.com>, <omahasteaka.com>, <omahasteakd.com>, <omahasteakks.com>, <omahasteakss.com>, <omahasteakz.com>, <omahasteas.com>, <omahasteask.com>, <omahasteeaks.com>, <omahastekas.com>, <omahastesks.com>, <omahastraks.com>, <omahastteaks.com>, <omahastwaks.com>, <omahasyeaks.com>, <omahhasteaks.com>, <omahisteaks.com>, <omahssteaks.com>, <omajasteaks.com>, <omihasteaks.com>, <ommahasteaks.com>, <omshasteaks.com>, <onahasteaks.com>, <oomahasteaks.com>, <owmahasteaks.com> and <pmahasteaks.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 7, 2008.
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