national arbitration forum

 

DECISION

 

Edible Communities, Inc. v. Patrick Thoreau

Claim Number: FA0803001158554

 

PARTIES

Complainant is Edible Communities, Inc. (“Complainant”), represented by William Schultz, of Merchant & Gould, P.C., Minnesota, USA.  Respondent is Patrick Thoreau (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theedibleaustin.com>, registered with Enom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 7, 2008.

 

On March 10, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <theedibleaustin.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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@theedibleaustin.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 3, 2008, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <theedibleaustin.com> domain name is confusingly similar to Complainant’s EDIBLE AUSTIN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <theedibleaustin.com> domain name.

 

3.      Respondent registered and used the <theedibleaustin.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Edible Communities, Inc. is a publishing and information services company that creates community-based, local-foods publications throughout the United States, including Austin, Texas.  Complainant registered the EDIBLE AUSTIN mark with the United States Patent and Trademark Office (“USPTO”) on August 21, 2007 (Reg. No. 3,282,311).  Complainant also owns the <edibleaustin.com> domain name. 

 

Respondent registered the <theedibleaustin.com> domain name on October 12, 2007.  Respondent has been using the disputed domain name to operate a website that imitates Complainant’s own website that resolves from the <edibleaustin.com> domain name.  Respondent is collecting personal information from Complainant’s potential customers through operation of the website imitating Complainant’s website.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant registered the EDIBLE AUSTIN mark with the USPTO, and has therefore established rights to the mark under Policy ¶ 4(a)(i).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

 

The <theedibleaustin.com> domain name is confusingly similar to Complainant’s EDIBLE AUSTIN mark because it incorporates both terms of the mark.  The elimination of the space between the two terms of the mark and the addition of the article “the” are both insufficient for distinguishing the disputed domain name from Complainant’s mark.  In Marriott International, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002), the panel held that “the addition of the [article] ‘the’ to the beginning of the domain names fail[ed] to make them separate and distinct, as distinguishable from Complainant’s marks.”  Moreover, because all registered domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” is irrelevant for determining confusing similarity under Policy ¶ 4(a)(i).  Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s EDIBLE AUSTIN mark under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant has the initial burden of making a prima facie case, showing that Respondent has neither rights nor legitimate interests in the disputed domain name.  The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”  The Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent.  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.”).

 

The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name based on Respondent’s failure to respond to the Complaint.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel found that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence.  Therefore, the Panel will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c).  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). 

 

Complainant asserts that Respondent has never been licensed or authorized to use its EDIBLE AUSTIN mark.  Furthermore, the WHOIS information indicates that the registrant is “Patrick Thoreau,” thereby failing to show that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

The website that currently resolves from the <theedibleaustin.com> domain name imitates Complainant’s own website.  Complainant asserts that Respondent is attempting to pass itself off as Complainant.  The panel in American International Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) found that the respondent attempted to pass itself off as the complainant online, which was blatant unauthorized use of the complainant’s mark and was evidence that the respondent had no rights or legitimate interests in the disputed domain name.  The Panel here also finds that Respondent’s use of the disputed domain name to pass itself off as Complainant shows that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) as well as Policy ¶ 4(c)(iii).  See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

Complainant contends that Respondent’s operation of a page imitating Complainant’s own website allows Respondent to collect the names, addresses, and billing information of consumers or advertisers who intend to provide information to Complainant.  Previous panels have found that when a respondent engages in “phishing” there is evidence that the respondent lacks rights and legitimate interests in the disputed domain name.  Here, the Panel finds that Respondent’s use of the disputed domain name to collect personal information from Complainant’s consumers and advertisers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

 

Registration and Use in Bad Faith

 

By operating a website that imitates Complainant’s website, Respondent’s use is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.  The Panel finds that Respondent is commercially benefiting from the goodwill associated with the EDIBLE AUSTIN mark, thereby evidencing registration and use in bad faith under Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

Moreover, Complainant alleges that Respondent’s use of the disputed domain name to collect personal information from Complainant’s consumers and advertisers is evidence of registration and use in bad faith.  The panel in Capital One Financial Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) found bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients.  Here, the Panel finds evidence of bad faith registration and use based on Respondent’s use of the <theedibleaustin.com> domain name pursuant to Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <theedibleaustin.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Harold Kalina (Ret.), Panelist

April 16, 2008

 

 

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