VDF FutureCeuticals, Inc. v. Drewcom c/o Domain Administrator
Claim Number: FA0903001254680
Complainant is VDF FutureCeuticals, Inc. (“Complainant”), represented by Sharon
D. Armstrong, of Withrop & Weinstine,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coffeeberrycream.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2009.
On March 27, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <coffeeberrycream.com> 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").
On April 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 27, 2009 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant manufactures and sells nutritional products around the world.
Complainant uses its COFFEEBERRY mark to identify its goods derived from the fruit of a coffee plant.
Complainant owns several trademark registrations for the COFFEEBERRY mark with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 3,165,945, issued October 31, 2006).
Respondent is neither commonly known by, nor licensed to register, the domain name <coffeeberrycream.com>.
Respondent registered the <coffeeberrycream.com> domain name on February 8, 2007.
Respondent’s disputed domain name resolves to a website displaying third-party links, some of which are in competition with the business of Complainant.
Respondent’s <coffeeberrycream.com> domain name is confusingly similar to Complainant’s COFFEEBERRY mark.
Respondent does not have any rights to or legitimate interests in the domain name <coffeeberrycream.com>.
Respondent registered and uses the <coffeeberrycream.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the COFFEEBERRY trademark
for purposes of Policy ¶ 4(a)(i) through its registration
with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also
Complainant submits that
Respondent’s <coffeeberrycream.com> domain name is confusingly
similar to Complainant’s COFFEEBERRY mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s mark in its entirety, merely adding the generic term “cream” and
the generic top-level domain “.com.” The
addition of the term “cream” creates a confusing similarity between the
disputed domain name and Complainant’s mark because the term has an obvious
relationship to Complainant’s nutrition business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained a
complainant’s mark in its entirety, adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to a
complainant’s VANCE mark, which described that complainant’s business, a
respondent “very significantly increased” the likelihood of confusion with that
complainant’s mark). Similarly, the
addition of a gTLD does not distinguish a disputed domain name from a competing
mark. See Jerry Damson, Inc. v.
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
See also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
Therefore, the Panel finds that Respondent’s <coffeeberrycream.com> domain name is confusingly similar to Complainant’s COFFEEBERRY mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <coffeeberrycream.com> domain name. Once Complainant makes out a prima facie case in support of its allegations under this heading, the burden shifts to Respondent to prove that it has rights or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
To the same effect, see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007): “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”
Our review of the Complaint satisfies us that Complainant has established a prima facie case sufficient for purposes of Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the allegations of the Complaint. We are therefore entitled to conclude that Respondent has no rights or interests cognizable under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). We will nonetheless examine the record before us to determine if there is any basis for concluding that Respondent has rights or interests in the contested doimain name when the facts are measured agianst the parameters of Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by, nor licensed to register, the domain name <coffeeberrycream.com>. We also note that Respondent’s WHOIS information identifies it only as “Drewcom c/o Domain Administrator.” We are therefore comfortable in concluding that Respondent is not commonly known by the disputed domain name, and that Respondent therefore lacks rights or legitimate interests in the disputed domain name within the contemplation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the <coffeeberrycream.com> domain name to display links advertising third-party websites, some of which are in competition with the business of Complainant. We infer from the circumstances set out in the Complaint that Respondent is using the disputed domain name to generate click-through fees from the described links. We conclude therefore that Respondent has not employed the contested domain to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is 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) where a registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the names to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <coffeeberrycream.com> domain name as described in the Complaint has the evident purpose of disrupting the business of Complainant and therefore stands as evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent registered and used the domain name <eebay.com> in bad faith where that respondent used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
The same essential facts, when viewed in light of the strong likelihood that
Respondent is collecting click-through
fees and thus attempting to profit by creating a likelihood of confusion
between Complainant’s mark and the disputed domain name, permits us to conclude
that Respondent’s use of the disputed domain name is evidence of bad faith
registration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that a respondent engaged in bad faith
registration and use of a domain name that was confusingly similar to a
complainant’s mark by displaying links to third-party websites that offered
services similar to those offered by that complainant);
see also Univ. of
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <coffeeberrycream.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 8, 2009
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