Artisan Confections Company v. [Registrant]
Claim Number: FA0802001142210
Complainant is Artisan Confections Company (“Complainant”), represented by Kathleen
S. Ryan, of The Ollila Law Group LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sharffenberger.com>, registered with Nicco Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <sharffenberger.com> domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark.
2. Respondent does not have any rights or legitimate interests in the <sharffenberger.com> domain name.
3. Respondent registered and used the <sharffenberger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Artisan Confections Company, operates a
first-tier chocolate production facility in
Respondent registered the <sharffenberger.com> domain name on
When Complainant initially filed its Complaint on
As a result of Respondent’s cyberflying activities, Complainant and Respondent are currently one and the same. In Complainant’s amended Complaint, Complainant requests that the Russian language requirement is waived pursuant to Rule 11(a). The Panel, based on the cyberflying determination discussed above, grants Complainant’s request and therefore the Complaint can be reviewed by the Panel in English.
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 registered the SCHARFFEN BERGER mark with
the USPTO, and thus has established rights to the mark pursuant to Policy ¶
4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <sharffenberger.com> domain name is confusingly
similar to Complainant’s SCHARFFEN BERGER mark.
Respondent’s disputed domain name contains a mispelled version of
Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the misspelling by one
letter of a complainant’s mark fails to create a distiguishing characteristic
needed in order to prevent a disputed domain name from being confusingly
similar to a mark pursuant to Policy ¶ 4(a)(i).
Components v. Gallant, FA 97075 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and
legitimate interests in the <sharffenberger.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant
has established a prima facie
case. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel chooses to examine the evidence on record against the applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
information displays information identifying Complainant as Respondent in this
case. However, Complainant states that
it has no control over the disputed domain name. Respondent’s activities constitute
“cyberflying,” a practice of changing the registrant of a domain name before or
during a UDRP proceeding in an attempt to disrupt the proceeding and circumvent
the Policy. There is accordingly no
evidence that Respondent is commonly known by the disputed domain name in any
manner, or authorized to use Complainant's mark. The Panel thus finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See MB Fin. Bank, N.A. v. MBBANK, FA
644517 (Nat. Arb. Forum
Complainant asserts that Respondent has used the <sharffenberger.com> domain name to attract unknowing Internet users to the associated website containing various third-party links to products in compeition with Complainant. The Panel finds that intentionally diverting Internet users to a competing website by using a confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
At present Respondent is not actively using the disputed domain name. There is no evidence on record that Respondent intends to use the disputed domain name. As a result, the Panel finds that Respondent has not made a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s previous use of
the <sharffenberger.com> domain
name is evidence of bad faith.
Respondent’s disputed domain name resolved to a website offering third-party
links to websites in competition with Complainant. The Panel assumes that Respondent received
click-through fees for such links. Therefore, the Panel finds that Respondent’s
previous use of the disputed domain name in order to commercially benefit by
attracting Internet users through a means of using a confusingly similar
disputed domain name is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
Currently, Respondent’s <sharffenberger.com> domain name is not actively being used. The Panel finds that such non-use consitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent's attempt to disrupt the UDRP process by listing Complainant as the owner of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations LLC, FA 876390 (Nat. Arb. Forum Feb. 13, 2007) (transferring the disputed domain name to the complainant where the respondent had engaged in cyberflying by changing the registration information to list the complainant as the registrant of the disputed domain name after notice of the dispute); see also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding the respondent’s efforts to disguise its true identity an example of bad faith conduct).
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 <sharffenberger.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 30, 2008
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