Artisan Confections Company v. Louis S c/o pen Water Enterprises Limited
Claim Number: FA0802001142523
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 <scarffenberger.com>, registered with Dotster, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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 postmaster@scarffenberger.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <scarffenberger.com> domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark.
2. Respondent does not have any rights or legitimate interests in the <scarffenberger.com> domain name.
3. Respondent registered and used the <scarffenberger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Artisan
Confections Company, owns and operates a specialty chocolate production
facility in
Respondent registered the <scarffenberger.com>
domain name on
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 established rights in
the SCHARFFEN BERGER mark through registration
with the USPTO and its continuous use for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Respondent’s <scarffenberger.com>
domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark. The mere
omission of the letter “h” from Complainant’s mark is not a distinction capable
of differentiating Respondent’s domain name from Complainant’s mark under the
UDRP. Moreover, a generic top-level
domain (“gTLD”) such as “.com” is a necessary characteristic present in all
domain names. As a result, the Panel
finds that Respondent’s <scarffenberger.com>
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See State
Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <scarffenberger.com>
domain name. In instances such as this
where Complainant has established a prima
facie case against Respondent, the burden of proof shifts from Complainant
to Respondent to bring forth its evidence of rights and legitimate interests
under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Respondent is not commonly known by the <scarffenberger.com> domain
name. Complainant
contends that it has not licensed the SCHARFFEN BERGER mark mark for
Respondent’s use and that no other evidence exists that Respondent is commonly
known by the <scarffenberger.com> domain name. Moreover, the
WHOIS information for the disputed domain name lists the registrant as “Louis S c/o pen Water Enterprises Limited.” As a result, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See
Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the
respondent is not a licensee of the complainant; (2) the complainant’s prior
rights in the domain name precede the respondent’s registration; (3) the
respondent is not commonly known by the domain name in question); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent is using the <scarffenberger.com>
domain name to redirect Internet users to competing chocolate producer’s
websites. Respondent’s use is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate non-commercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has shown that Respondent is using the <scarffenberger.com> domain name to connect Internet users to a website offering products that directly compete with Complainant’s own chocolate products. The Panel finds that use to be a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Finally, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting website. Moreover, Respondent is seeking to capitalize on this confusion by selling competing chocolate products through its resulting website. This use is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
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 <scarffenberger.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 28, 2008
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