Oneida Victor Inc. v. WCS
Claim Number: FA0811001234816
Complainant is Oneida Victor Inc. (“Complainant”), represented by Larry
B. Donovan, of Tucker Ellis and West LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <conibeartraps.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 Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 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@conibeartraps.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 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <conibeartraps.com> domain name is confusingly similar to Complainant’s CONIBEAR mark.
2. Respondent does not have any rights or legitimate interests in the <conibeartraps.com> domain name.
3. Respondent registered and used the <conibeartraps.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oneida Victor Inc., is a nationally-recognized
company manufacturing, distributing, and selling animal trapping products under
Complainant’s CONIBEAR mark. Complainant
has been using its CONIBEAR mark as early as
Respondent, WCS, registered the <conibeartraps.com> domain name on
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.
The Panel finds that registration of Complainant’s mark with
a governmental trademark authority, in this case the USPTO, is sufficient to
establish Complainant’s rights in the CONIBEAR mark pursuant to Policy ¶
4(a)(i). See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see
also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that the complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)).
Respondent’s <conibeartraps.com> domain name is
confusingly similar to Complainant’s CONIBEAR mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name incorporates Complainant’s mark in its entirety and adds both a generic
term, “traps,” which is associated with Complainant’s services and goods, and
the generic top-level domain (“gTLD”) “.com.”
The disputed domain name is not differentiated from Complainant’s mark
by such changes. Therefore, the Panel
finds that Respondent’s disputed domain name is confusingly similar to
Complainant’s CONIBEAR mark pursuant to Policy ¶ 4(a)(i). See
Miller Brewing
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant is required to make a prima facie case in support of its allegations before the burden
shifts to Respondent to prove it has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case and that the burden
shifts to Respondent to prove it has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c). See 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); see
also SEMCO Prods., LLC v. dmg
world media (
Because Respondent did not respond to the Complaint, the
Panel may assume that Respondent has no rights or legitimate interests in the
disputed domain name. However, the Panel
chooses to examine the record in consideration of the factors listed under
Policy ¶ 4(c). The Panel may accept the
allegations in the Complaint as true unless clearly contradicted. See Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum
The disputed domain name redirects Internet users to a commercial website that resolves from the <wildlifecontrolsupplies.com> domain name, which offers Complainant’s products and those of Complainant’s competitors. A copy of the WHOIS information shows that the <wildlifecontrolsupplies.com> domain name is registered to the same administrative contact as the disputed domain name. The Panel finds that Respondent is redirecting confused consumers to Respondent’s own site for commercial gain, which is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds no evidence that Respondent is commonly
known by the disputed domain name. The
WHOIS information identifies Respondent as “WCS.” Without further information, the Panel finds
that Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Complainant alleges that the disputed domain name disrupts
Complainant’s business and therefore Respondent has registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). Respondent’s use of the confusingly similar
domain name to sell Complainant’s and Complainant’s competitor’s products disrupts
Complainant’s business by diverting potential customers from Complainant’s
website. The Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
Complainant alleges that Respondent’s use of the disputed
domain name intentionally exploits the long history and good reputation of
Complainant’s mark for commercial gain. Respondent’s disputed
domain name creates an impression of endorsement by or at least an affiliation
with Complainant. Given the inclusion of
Complainant’s products on the website, at the very least consumers will assume
Complainant approves of Respondent selling its products on the website. The Panel finds that Respondent’s
commercial gain through the use of the confusingly similar domain name is
evidence of registration and use of the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web
Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding
evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using
the <dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also Hewlett-Packard
Co. v. Ali, FA 353151 (Nat. Arb. Forum
Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit
from the goodwill associated with Complainant’s HP marks and us[ed] the
<hpdubai.com> domain name, in part, to provide products similar to those
of Complainant. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has satisfied 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 <conibeartraps.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 31, 2008
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