Rembrandt Enterprises v. Maripon Management, Inc. c/o Domain, Admin
Claim Number: FA0905001265189
Complainant is Rembrandt
Enterprises (“Complainant”), represented by Anne W. Glazer, of Stoel Rives LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cutleregg.com>, registered with Domainsurgeon.com, LLC.
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 June 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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@cutleregg.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <cutleregg.com> domain name is confusingly similar to Complainant’s C CUTLER EGG PRODUCTS mark.
2. Respondent does not have any rights or legitimate interests in the <cutleregg.com> domain name.
3. Respondent registered and used the <cutleregg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been a producer of egg products since 1920. The egg products have been marketed since that time under the CUTLER EGG PRODUCT name. Complainant holds a trademark registration with the United States Patent and Trade Office (“USPTO”) for the C CUTLER EGG PRODUCT mark (Reg. No. 1,958,906 issued February 27, 1996).
Respondent registered the <cutleregg.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.
Complainant has registered the C CUTLER EGG PRODUCT mark
with the USPTO. Previous panels have
held that registration of a mark with the USPTO is sufficient to establish
Complainant’s rights under Policy ¶ 4(a)(i).
Therefore, the Panel finds that Complainant has established rights in
the C CUTLER EGG PRODUCT mark through its registration of the mark with the
USPTO. 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 Microsoft Corp. v.
Burkes, FA 652743 (Nat. Arb. Forum
Respondent’s <cutleregg.com> domain name is
confusingly similar to Complainant’s C CUTLER EGG PRODUCT mark except for the removal
of the letter “c” and the word “product,” the removal of a space, and the
addition of a generic top-level domain “.com.”
The Panel finds that the removal of a letter, word, and space fails to
distinguish the disputed domain name from Complainant’s mark under Policy ¶
4(a)(i). The Panel further finds that
the addition of a generic top-level domain is irrelevant in a Policy ¶ 4(a)(i)
analysis. See Granarolo S.p.A. v.
Dinoia, FA 649854 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <cutleregg.com> domain name. Previous panels have found that when a
complainant makes a prima facie case
in support of its allegations, the burden shifts to the respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). The Panel finds Complainant
has made a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the <cutleregg.com> domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See 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)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Respondent attempts to pass itself off as Complainant online
by using the <cutleregg.com> domain name to resolve to a website
featuring an out-of-date version of Complainant’s website. Respondent’s use of a domain name that is
confusingly similar to the C CUTLER EGG PRODUCT mark to redirect Internet users
for that purpose is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”); see also MO Media
LLC v. NeXt Age Technologies LTD, FA
220031 (Nat. Arb. Forum
The Panel finds no
evidence in the record, and no evidence submitted by Respondent, demonstrating
that Respondent is commonly known by the <cutleregg.com>
domain name. Complainant asserts that it
has never authorized Respondent to use its mark. Furthermore, the WHOIS information lists
Respondent as “Maripon Management, Inc.”
Therefore, the Panel fails to find that Respondent has established
rights or legitimate interests in the <cutleregg.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
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <cutleregg.com> domain name, which is confusingly similar to Complainant’s C CUTLER EGG PRODUCT mark, to pass itself off as Complainant by redirecting Internet users, interested in Complainant’s products, to a website featuring an out-of-date version of Complainant’s website. The Panel assumes Complainant receives some commercial benefit from this use. Therefore, the Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <cutleregg.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 9, 2009
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