The Big Green Egg, Inc. v.
Claim Number: FA0810001228170
Complainant is The Big Green Egg, Inc. (“Complainant”), represented by Christian
B. Turner, of Duane Morris LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigreenegg.com>, registered with Compana, LLC.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2008.
On October 8, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <bigreenegg.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 10, 2008.
On November 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that:
By its Response, the Respondent alleges that:
· The disputed domain name is not identical to any mark in which Complaint has enforceable rights under the policy, as its trademarks is not a famous one and consist of generic and descriptive words;
· The Complainant failed to prove that Respondent has no rights or legitimate interest in the name as click-through sites are a bona fide offering of goods and services. The disputed domain name describes an actual product, to wit, eggs from chickens which are green and sought after by health food enthusiasts or, more metaphorically, eggs which are taken from chickens raised on environmentally sound “green” farms (See e.g. http://www.greeneggs.net.au/).
· The Respondent contracts with Hitfarm which connects its own websites to the domain name to offer a legitimate business of targeted advertising searches that are legal everywhere in the world and are actually undertaken in connection with industry leaders Google and Yahoo. Second, the links in question are provided pursuant to Yahoo or Google’s terms and are triggered by search requests entered by computer users.
· The Respondent has no control over what terms advertisers bid on at Google or Yahoo and what terms appear on its website.
· The Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith.
· The Respondent had no knowledge of Complainant at registration time. The renewal of the disputed domain name does not amount to bad faith registration of the domain and thus the Policy is not satisfied.
· In most of the UDRP cases in which the Respondent has been involved, it consented to the transfer of the disputed domain names and made no responsive arguments.
There is no
evidence in the Complaint that Respondent in
· The Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words, and the disputed domain in this proceeding is no different from the domains listed above and was registered for the same kind of non-infringing use, which would be to describe a particular consumer item, namely large eggs.
The disputed domain name has typo-squatted the Complainant’s trademark BIG GREEN EGG in order to capitalize on a potentially common typographical error made by Internet users and to take advantage of the Complainant’s trademark.
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.
Complainant asserts rights in the BIG GREEN EGG mark by evidencing its
corresponding trademark registration with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,627,587 issued October 1, 2002). The Panel finds that Complainant’s trademark
registration adequately confers rights in the BIG GREEN EGG mark to Complainant
pursuant to Policy ¶ 4(a)(i).
Respondent’s <bigreenegg.com> domain name contains Complainant’s alleged BIG GREEN EGG mark with the removal of the first “g” and spaces between the words, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that spaces and gTLDs are irrelevant under an analysis of the Policy, and that an otherwise one-letter difference does not sufficiently distinguish a disputed domain name.
In response to the Complainant ‘s asserted rights, the Respondent disagrees but makes no allegations of its own with respect to this element of the Policy.
In this sense, the Panel concludes that Respondent’s <bigreenegg.com> domain name is confusingly similar to Complainant’s alleged BIG GREEN EGG mark pursuant to Policy ¶ 4(a)(i). See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
In this sense Complainant contends that Respondent does not own any registered trademark in “bigreenegg,” and is not commonly known by the <bigreenegg.com> domain name.
Complainant also alleges that Respondent is not licensed or authorized to operate under the BIG GREEN EGG mark, and the Panel should note that the WHOIS information identifies Respondent as “Texas International Property Associates- NA NA.”
Based on this evidence, the Panel concludes that Respondent is not commonly known by the <bigreenegg.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
It is undisputed that Respondent is using the <bigreenegg.com> domain name to display a list of hyperlinks advertising Complainant’s products for sale through third-party suppliers. Complainant contends that this is a commercial use of the <bigreenegg.com> domain name, and the Panel presumes that Respondent receives referral fees for each redirected Internet user that clicks on one of these links.
On the other side, the Respondent contends that the <bigreenegg.com> domain name is comprised of generic terms that are not exclusively associated with Complainant’s business. However, Respondent does not specifically identify the generic terms that allegedly comprise the disputed domain name. In fact the Respondent refers only to part of the disputed domain name which would represent in its opinion generic terms “GREEN EGG” and provides some examples in this sense. Nevertheless the Respodent is using in the disputed domain name it its entirety the Complainant trademark which is BIG GREEN EGG and not only part of it which may be described as generic and descriptive. The Panel does not consider the disputed domain name as descriptive and generic, as in fact also the Respondent does not do by including the entire trademark of the Complainant in it.
In this sense the Panel concludes, that Respondent’s use of the <bigreenegg.com> domain name constitutes neither 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Respondent alleges that the hyperlinks on the website resolving from the <bigreenegg.com> domain name were posted by the registrar, and therefore claims that it is not responsible for this content. The Panel considers that the Respondent isaccountable for the content posted to its website resolving from the disputed domain name See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”).
In addition, as the Panel concluded that the disputed domain name is not comprised of common terms, Panel determines that Respondent’s use of the disputed domain name to operate a hyperlinked search engine cannot constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent is a notorious typosquatter. The explanations of the Respondent as to the
situation in the UDRP cases it was involved does not satisfy the Panel in not
finding in this case typo squatting. The
<bigreenegg.com> domain name contains Complainant’s alleged BIG GREEN
EGG mark but removes the first or second “g,” which leads the Panel to believe
that Respondent is attempting to capitalize on a potentially common
typographical error made by Internet users.
The Respondent’s <bigreenegg.com>
domain name is a typosquatted version of Complainant’s BIG GREEN EGG mark and
this is considered by the the Panel as additional evidence of Respondent’s lack
of rights and legitimate interests in the <bigreenegg.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Microsoft Corp.
v. Domain Registration
In conclusion, the Panel finds that the Complainant satisfied the second element of the Policy.
Complainant argues that Respondent had at least constructive knowledge of Complainant’s rights in its BIG GREEN EGG mark at the time it registered the <bigreenegg.com> domain name.
The Respondent is using the <bigreenegg.com> domain name to display a list of hyperlinks advertising Complainant’s products for sale through third-party suppliers.
Such use leads the Panel to infer that Respondent had actual knowledge of Complainant’s business based on the content displayed on the resolving website.
Such actual knowledge of Complainant’s rights in the BIG GREEN EGG mark at the time it registered the <bigreenegg.com> domain name, represents also additional evidence that Respondent registered and is using the <bigreenegg.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Moreover, the Respondent’s advertising of Complainant’s products for sale through third-party suppliers is likely to disrupt Complainant’s business, and therefore constitutes bad faith registration and use of the <bigreenegg.com> domain name pursuant to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Further, the Complainant contends and the Panel agrees that Respondent is using the <bigreenegg.com> domain name to create a likelihood of confusion that attracts Internet users to its site for Respondent’s own commercial gain. Specifically, Complainant believes that Respondent has created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website resolving from the <bigreenegg.com> domain name. Complainant also claims that Respondent earns click-through fees for each redirected Internet user, and the Panel makes this presumption. Such use represents bad faith use pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also 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).
In addition, the Complainant notes that Respondent was ordered by UDRP
panels in approximately ninety (90) arbitration claims in the timeframe between
April 2, 2007 and September 24, 2008 to transfer infringing domain names to the
respective complainants in those cases. See, e.g., PC Connection, Inc. v.
Finally, the Panels determination in its analysis of Policy ¶ 4(a)(ii) that Respondent has engaged in typosquatting, provides additional evidence that Respondent registered and is using the <bigreenegg.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigreenegg.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: December 1, 2008
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