PET Incorporated v. Carl Allocca
Claim Number: FA0904001256917
Complainant is PET Incorporated (“Complainant”), represented by Chet
F. Garner, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <progresso.com>, registered with Network Solutions, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 9, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <progresso.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 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 postmaster@progresso.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <progresso.com> domain name is identical to Complainant’s PROGRESSO mark.
2. Respondent does not have any rights or legitimate interests in the <progresso.com> domain name.
3. Respondent registered and used the <progresso.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PET Incorporated, and its predecessors-in-interest have been engaged in the food products business since 1922. Complainant owns trademark and service registrations for the PROGRESSO mark, which was registered as early as 1942 (i.e., Reg. No. 398,874, issued December. 1, 1942). Complainant prominently uses the PROGRESSO mark in advertising, sales, and marketing for its food products.
Respondent registered the <progresso.com> domain name on April 2, 1996. Respondent is using the domain name as a parked domain containing directories and click-through advertising links that resolve to the websites of Complainant’s competitors. Respondent has no affiliation with Complainant or its PROGRESSO mark.
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 Complainant has established rights in
the PROGRESSO mark based on its registrations of the mark with the UPSTO under
Policy ¶ 4(a)(i).
See Expedia, Inc.
v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s]
mark is registered with the USPTO, [the] complainant has met the requirements
of Policy ¶ 4(a)(i).”); see also 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)).
Respondent’s domain name incorporates Complainant’s entire PROGRESSO mark. The addition of a generic top-level domain name “.com” is irrelevant—its addition fails to alleviate the identicality between the domain name and Respondent’s PROGRESSO mark. The Panel finds that the differences between Respondent’s domain name and Complainant’s PROGRESSO mark are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. Thus, Respondent’s domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <progresso.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Due to Respondent’s failure to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <progresso.com> domain name.
Complainant asserts that Respondent has no legitimate connection or
authorization to use the PROGRESSO mark.
According to Respondent’s WHOIS information, Respondent is an individual
by the name of Carl Allocca. Thus,
Respondent is not commonly known by the <progresso.com> domain
name pursuant to Policy ¶ 4(c)(ii) analysis. See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the 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 the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
According to
Complainant, the <progresso.com> domain name is being used to resolve to a parked domain that functions as
a directory site by providing links to Complainant’s competitors. Such use for the purpose of benefiting from
the goodwill association with Complainant’s PROGRESSO mark does not constitute
a bona fide offering of goods or
services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or
(iii), respectively. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s
use of domain names confusingly similar to the complainant’s WAL-MART mark to
divert Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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
also Skyhawke Techs., LLC v.
Tidewinds Group, Inc., FA 949608
(Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise Complainant
and its competitors’ products. The Panel
finds that this use of the disputed domain name does not constitute 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).”).
Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of Complainant’s
PROGRESSO mark in the <progresso.com> domain name that resolves to a parked domain with links to Complainant’s
competitors’ websites constitutes bad faith registration and use under Policy ¶
4(b)(iii). See David
Complainant alleges
that Respondent is intentionally using the PROGRESSO mark in the disputed domain
name to attract Internet users for commercial gain. The <progresso.com> domain name
contains click-through links that resolve to websites of Complainant’s
competitors. Such use constitutes bad
faith under Policy ¶ 4(b)(iv) because Respondent has
intentionally created a likelihood of confusion as to Complainant’s endorsement
or sponsorship of the disputed domain name and resolving website. See
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 <progresso.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 14, 2009
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