The Andersons, Inc. v. Jonathan Forester
Claim Number: FA0804001173272
Complainant is The Andersons, Inc. (“Complainant”), represented by Gregg
W. Emch, of MacMillan, Sobanski & Todd, LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gritocob.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 Panel in this proceeding.
Hugues G. Richard as Sole Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On April 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of the mark GRIT-O’ COBS registered with the
United States Patent and Trademark Office (USPTO) under number 360,013 on
Complainant states that the domain name <gritocob.com> is a misspelling of Complainant’s mark GRIT-O’
COBS, in which the subject domain name deletes the “s” after the mark. See Universal City Studios, Inc. v. Harper
(WIPO Sept. 5, 2000) (finding that deleting the letter “s” from complainant’s
UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark
and thus is confusingly similar to complainant’s mark); see also Victoria’s
Secret v. Internet Inv. Firm Trust,
FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain names
<victoriasecrets.com>, <victoriasecretes.com>, <victoreasecret.com>,
<victoreasecret.com> and other variations thereof confusingly similar to the
Complainant also adds that the omission of the hyphen
between “GRIT” and “O” and the space between “O” and “COB” in the disputed
domain name does not sufficiently distinguish the domain name from
Complainant’s GRIT-O’ COBS mark. See
Complainant submits that the <gritocob.com> domain name is virtually identical and/or confusingly similar to Complainant’s GRIT-O’ COBS mark and that Policy 4(a)(i) has been satisfied.
Rights and Legitimate Interests
Complainant alleges that Respondent is using the subject
domain name <gritocob.com> to link to third party commercial web
sites. Some of these third party web
sites offer goods that are similar to Complainant’s goods. Complainants states that this does not
constitute a bona fide offering of
goods and services under Policy 4(c) (i) nor is it a noncommercial or fair use
of the domain name under Policy 4(c) (iii).
See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1,
2000) (finding no rights or legitimate interests in the domain names
<faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and
<faoswartz.com> where the respondent was using these domain names to link
to an advertising web site); see also Vapor Blast Mfg. Co. v. R&S Tech.,
Inc., FA 96577 (Nat.
Furthermore, Complainant adds that the Respondent is not commonly known by the name/mark “gritocob.” The Respondent is commonly known by the name “Jonathan Forester” thus infringing Policy 4(c)(ii).
Complainant claims that following those arguments Respondent does not have any rights or legitimate interests to the domain name in question and that accordingly, Policy 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant alleges that Respondent attracts Internet users to third party commercial web sites using a domain name that is virtually identical and/or confusingly similar to Complainant’s GRIT-O’ COBS mark and that Respondent’s actions constitute bad faith registration and use under Policy 4(b)(iv).
is linking a confusingly similar domain name to third party commercial web
sites and it is likely that the Respondent gains revenue from this activity.
Such conduct distinctly falls within the bad faith bounds of Policy 4(b)(iv). See,
e.g., ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum
Respondent’s registration and use of the subject domain name was and is in bad faith. Accordingly, Policy 4(a)(iii) has been satisfied.
Respondent alleges that the web domain <gritocob.com> has enough characteristics that differ from The Andersons, Inc. GRIT-O’COBS mark and thus does not infringe on their trademark. Respondent states that the spelling of the domain name is clearly different and that there are no distinguishing marks such as commas or spaces in the domain name.
Respondent denies having a Web site named <gritocob.com>. Respondent states that he registered the domain name in good faith. The web domain is merely parked in a monetized service (cash parking) offered by GoDaddy.com. While in this state, respondent claims to have no control over whom or what the service advertises. The page that is listed by the complainant as respondent’s Web Site is not his page. It is a web page designed by and the sole property of GoDaddy.com.
FINDINGS and DISCUSSION
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.
rights in the GRIT-O’COBS mark through its registration of the trademark with
the United States Patent and Trademark Office (“USPTO”) which occurred on
The Panel finds that the <gritocob.com> domain name is confusingly similar to Complainant’s GRIT-O’COBS mark under Policy 4(a)(i). The disputed domain name contains a modified version of Complainant’s mark which deletes the letter “s” from the end of the mark and eliminates the punctuation located in the mark. Additionally, the disputed domain name adds the generic top-level domain “.com.” The Panel finds that these modifications to Complainant’s mark do not create a sufficiently distinct domain name for the purposes of Policy 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Anheuser – Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum June 19, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”).
Since the Complainant made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).
The WHOIS information for the disputed domain name identifies Respondent
as “Jonathan Forester,” and there does not appear to be any indication
in the record that Respondent is or has ever been known by the disputed domain
name. Thus, the Panel finds that Respondent is not commonly known by the <gritocob.com>
domain name pursuant to Policy 4(c)(ii). See Educ.
Broad. Corp. v. DomainWorks Inc.,
FA 882172 (Nat. Arb. Forum
Complainant contends that Respondent is using the <gritocob.com> domain name to display a website that hosts hyperlinks for various third-party websites, some of which are in direct competition with Complainant and its business. The Panel agrees and finds that such use is neither a bona fide offering of goods and services under Policy 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 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).
Those factors in combination are sufficient to establish a prima facie case that the Respondent has no right or legitimate interest in the Domain Name. The burden of proof on this part of the Policy therefore shifts to the Respondent.
That burden of proof requires the Respondent to produce credible evidence either (i) that it was using the Domain Name in connection with a bona fide offering of goods or services before it received notice of the present dispute (Paragraph 4(c)(i) of the Policy), or (ii) that it has some other basis for claiming a right or legitimate interest in the Domain Name. The Respondent failed to give any credible evidence to that effect.
Complainant contends that Respondent is using the <gritocob.com> domain name to host a website for its own commercial gain by creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation, and endorsement with the disputed domain name and resulting website. The Panel finds the disputed domain name and resulting website are capable of creating such confusion, and that Respondent is likely benefiting from operation of the disputed domain name, presumably through click-through fees, the Panel thus finds evidence of bad faith registration and use under Policy 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy 4(b)(iv)).
The Respondent submits that it is not
responsible for the sponsored links appearing on the Respondent’s website. It says that those links were chosen by GoDaddy,
without its knowledge or input. The
Panel does not accept that the Respondent can disclaim responsibility for the
various links on the Respondent’s website which are concerned with the
Complainant or with the field of commercial activity of the Complainant. The Panel respectfully agrees with the Panel
in the Starwood Hotels and Resorts Worldwide Inc case, where it was
found that the Respondent was “ultimately accountable for the use of the Domain
Names, even if an employee (or algorithm) of an online affiliate advertising
network selected the particular advertisements on display.” See too the
decision of the panel in NVT
Although the web pages were automatically generated by DomainSponsor’s software on the basis of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of internet users who are confused where (as here) the second level domain (“SLD”) is identical to the mark of a company which has been used on a substantial scale for a number of years.
The Respondent is ultimately responsible for the content of the website generated by GoDaddy.com’s technology.
For all of the foregoing reasons, the Panel finds that the Respondent registered and has been using the Domain Name in bad faith. Respondent was likely aware of the Complainant and its mark and the domain name is a blatant case of “typosquatting.”
Furthermore, the preliminary correspondence between Respondent and the NAF comforts the Panel in its decision, as the e-mail sent to the NAF by Respondent on April 4, 2008 clearly states that his desire to register the domain name was solely motivated by the intention of selling complainant’s products, of which he alleges having had a verbal agreement from Complainant to do so. He even expressed his disappointment at not being allowed to do as such.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gritocob.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard
Dated May 14, 2008
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