Center for Food Safety v. Della Lawson
Claim Number: FA0806001198797
Complainant is Center for Food Safety (“Complainant”), represented by Elizabeth
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <true-food.net>, registered with Enom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 6, 2008.
On June 3, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <true-food.net> 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").
10, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 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.
On July 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <true-food.net> domain name is confusingly similar to Complainant’s TRUE FOOD mark.
2. Respondent does not have any rights or legitimate interests in the <true-food.net> domain name.
3. Respondent registered and used the <true-food.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Center for Food Safety, uses the TRUE FOOD mark for its online citizen action network, which identifies advocacy and informational services at its website that corresponds to the <truefoodnow.org> domain name. Complainant also publishes a quarterly newsletter with a portion of the content identified as “True Food Corner.” While Complainant has used this mark since 2005, Complainant was involved in a transfer of goodwill, assets, and rights in the mark with a prior independent project that used the mark since 2003. Complainant is therefore the successor-in-interest to the rights in the TRUE FOOD mark dating back to 2003.
Respondent registered the <true-food.net> domain name on April 6, 2004. Respondent is currently using the disputed domain name to resolve to a website that imitates Complainant’s website at the <truefoodnow.org> domain name, and attempts to pass itself off as Complainant.
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 not alleged a registered trademark with an entity such as the United States Patent and Trademark Office (“USPTO”) or any other governmental authority. However, Complainant need not make such demonstrations of evidence in order to achieve UDRP standing under Policy ¶ 4(a)(i). Complainant may set forth evidence of its common law rights in the TRUE FOOD mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant has alleged use of the disputed domain name since 2005, though it was involved in a transfer of assets, including rights in the TRUE FOOD mark, with an independent project that used the mark since 2003. Complainant has not alleged how and why this predecessor-in-interest utilized the mark. However, the Panel has no contrary evidence on behalf of Respondent in which to counter these assertions, and thus is left solely with the statements within the Complaint. To that end, Complainant has used the mark in connection with its Internet-based informational services and quarterly newsletter. The Panel finds that this evidence, however distant from overwhelming it may be, is nonetheless sufficient to confer upon Complainant sufficient common law rights in the TRUE FOOD mark that predate Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
The <true-food.net> domain name copies the entire TRUE FOOD mark while adding a mere hyphen. Previous panels are quite consistent in holding that the addition of a hyphen is irrelevant in a confusing similarity analysis under Policy ¶ 4(a)(i). This is also true of the generic top-level domain (“gTLD”) “.net.” The Panel therefore finds that the <true-food.net> domain name is confusingly similar to Complainant’s TRUE FOOD mark under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <true-food.net> domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has asserted a sufficient prima facie case supporting this allegation, and therefore Respondent receives the task of demonstrating its rights or legitimate interests in the disputed domain name. 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.”); see also 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”).
Respondent has not offered any evidence in its defense of Complainant’s allegations. Implicit in this is the fact that the Panel has virtually nothing within the evidentiary record to determine if Respondent is commonly known by the <true-food.net> domain name. To wit, the registrant of record for the disputed domain name is listed as “Della Lawson.” This type of evidence is at best meager, however in this case it has absolutely no merit since there is no phonetical or other discernible relationship to the disputed domain name. As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The disputed domain name resolves to a website that blatantly copies Complainant’s web content from its own domain name. Neither party has offered any inference as to what rationale lies behind this form of imitation. Thus it shall remain hidden whether Respondent sought to profit from such a lark or simply confuse Internet users and tarnish Complainant’s mark. Fortunately, the Panel need not waste any time in an attempt to decipher such intent. It is enough to know that Respondent’s effort to pass itself off with the same content and use of the mark cannot stand as 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). The Panel finds that Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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 . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <true-food.net> domain name simply resolves to a copycat website, passing itself off as Complainant’s legitimate website. What events may come as a result of Internet users being diverted to this artificial website is unclear; however it is patent enough that Complainant’s business is disrupted through this diversion. Internet users seeking information would likely not be aided by this imitation, which is wrought with a keen potentiality of fraud. In any event, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
This diversion does not simply affect Complainant and its mark. Internet users seeking Complainant will likely be drawn to the disputed domain name. Seeking advocacy and informational guidance on food topics, such Internet users would be then confronted with a website that at first glance does not carry much difference from Complainant’s own website. As stated previously, why Respondent has acted in such fashion remains exasperatingly veiled from the Panel’s sight. Complainant contends that Respondent merely copied Complainant’s prior version of its website. Whether the information confronting Internet users is fraudulent or merely outdated, Respondent is still attempting to pass itself off as Complainant. The Panel therefore finds Respondent’s registration and use of the disputed domain name—however illogical it may seem—to be in bad faith under Policy ¶ 4(a)(iii). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with 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 <true-food.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 14, 2008
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