Link Snacks, Inc. v.
Claim Number: FA0810001231346
Complainant is Link Snacks, Inc. (“Complainant”), represented by William
D. Schultz, of Merchant & Gould,
P.C.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <jackslinks.com>, registered with Domain Contender, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On October 29, 2008, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <jackslinks.com> domain name is registered with Domain Contender, LLC and that Respondent is the current registrant of the name. Domain Contender, LLC has verified that Respondent is bound by the Domain Contender, 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 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 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@jackslinks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jackslinks.com> domain name is confusingly similar to Complainant’s JACK LINK’S mark.
2. Respondent does not have any rights or legitimate interests in the <jackslinks.com> domain name.
3. Respondent registered and used the <jackslinks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Link Snacks,
Inc., is a well-known manufacturer of beef jerky and other snack foods. Complainant has registered its JACK LINK’S
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,147,622 issued March 31, 1998).
Respondent registered the <jackslinks.com> domain name on May 28, 2005, and uses it to display a list of hyperlinks, some of which advertise beef jerky products that compete with Complainant’s business.
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 evidenced its USPTO trademark registration for the JACK LINK’S mark. This is sufficient to demonstrate Complainant’s rights in the mark as required by Policy ¶ 4(a)(i). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration).
Respondent’s <jackslinks.com> domain name contains a variation of Complainant’s JACK LINK’S mark. The disputed domain name adds an “s” to the end of “jack,” removes the space between the words and the apostrophe in “link’s,” and adds the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that adding an “s” does not add any distinguishing features to a disputed domain name. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Furthermore, removing a space and punctuation as well as adding a gTLD are without relevance under an analysis of the Policy since these are requirements of all domain names. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Respondent’s <jackslinks.com> domain name is confusingly similar to Complainant’s JACK LINK’S mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <jackslinks.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by the <jackslinks.com> domain name, and furthermore is not licensed or authorized to use Complainant’s JACK LINK’S mark or any variation thereof in a domain name. Respondent has not countered this argument with its lack of response, and the WHOIS information identifies Respondent as “Belize Domain WHOIS Service.” Therefore, the Panel finds for Complainant on this point and concludes that Respondent is not commonly known by the <jackslinks.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent’s <jackslinks.com> domain name resolves to a website that displays a list of hyperlinks, some of which promote beef jerky products that compete with Complainant’s business. The Panel presumes that Respondent receives click-through fees for each redirected Internet user that clicks on one of these links and is likely redirected to the websites of Complainant’s competitors. Such use of the <jackslinks.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); 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.
Respondent’s <jackslinks.com> domain name displays
a list of hyperlinks, some of which lead to the websites of Complainant’s
competitors. In David Hall Rare Coins v.
Customers may also become confused as to the affiliation, endorsement, or sponsorship of these competing beef jerky products advertised on Respondent’s website, which resolves from the disputed domain name that is confusingly similar to Complainant’s JACK LINK’S mark. Complainant has alleged that Respondent is attempting to profit from this likelihood of confusion. Respondent is therefore using a slight variation of Complainant’s JACK LINK’S mark in the disputed domain name for its own personal gain, so the Panel concludes that Respondent registered and is using the <jackslinks.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
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 <jackslinks.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 11, 2008
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