Shasta Beverages, Inc., a wholly owned subsidiary of National Beverage Corp. v. Texas International Property Associates - NA NA
Claim Number: FA0909001283197
Complainant is Shasta
Beverages, Inc., a wholly owned subsidiary of National Beverage Corp. (“Complainant”), represented by Vickie L. Hilden, of Shasta Beverages,
Inc., a wholly owned subsidiary of National
Beverage Corp.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shastabeverages.com>, registered with Compana, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2009.
On September 9, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <shastabeverages.com> domain name is registered with Compana, Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is bound by the Compana, 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 September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@shastabeverages.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <shastabeverages.com> domain name is confusingly similar to Complainant’s SHASTA mark.
2. Respondent does not have any rights or legitimate interests in the <shastabeverages.com> domain name.
3. Respondent registered and used the <shastabeverages.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shasta Beverages, Inc., manufactures and distributes non-alcoholic beverages, including the SHASTA brand soft drinks. Complainant first used the SHASTA mark on December 6, 1889. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SHASTA mark (e.g., Reg. No. 210,723 issued March 23, 1926).
Respondent registered the <shastabeverages.com> domain name on December 13, 2005. The disputed domain name resolves to a website containing a commercial search engine and featuring links to Complainant’s competitors in the non-alcoholic beverages industry.
Respondent has been the respondent in
other UDRP proceedings in which disputed domain names were transferred from
Respondent to the respective complainants in those cases. See ABC Liquors, Inc. v.
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.
Previous panels have found that a complainant establishes rights in a mark through a registration of the mark with a governmental trademark authority. Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the SHASTA mark through its registrations with the USPTO (e.g., Reg. No. 210,723 issued March 23, 1926). 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s <shastabeverages.com>
domain name is confusingly similar to Complainant’s SHASTA mark under Policy ¶
4(a)(i). The disputed domain name adds
the descriptive term “beverages,” which describes Complainant’s non-alcoholic
beverages business, and adds the generic top-level domain (“gTLD”) “.com” to
Complainant’s SHASTA mark. The Panel
finds the addition of a descriptive term and a gTLD fails to sufficiently
distinguish the disputed domain name from Complainant’s SHASTA mark. See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Kohler Co. v. Curley, FA
890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed
domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc.
v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <shastabeverages.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(a)(ii). The Panel finds Complainant has made a sufficient 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 disputed 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <shastabeverages.com> domain name resolves to a website featuring a commercial search engine and hyperlinks to Complainant’s competitors in the non-alcoholic beverages industry. Complainant alleges Respondent profits from the search engine and hyperlinks through the receipt of click-through fees. The Panel finds Respondent’s use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The WHOIS information, provided by Complainant, lists
Respondent as “Texas International Property Associates - NA NA.” Respondent fails to offer evidence
contradicting this information and showing Respondent is commonly known by the <shastabeverages.com>
domain name. There is no other evidence on the record
showing Respondent is commonly known by the disputed domain name. Complainant further asserts that Respondent
is not authorized to use the SHASTA mark.
Therefore the Panel finds that Respondent is not commonly known by the <shastabeverages.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name); see
also Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding
that the respondent was not commonly known by the <thirteen.com> domain
name based on all evidence in the record, and the respondent did not counter
this argument in its response).
The Panel finds
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <shastabeverages.com>
domain name is a part of a pattern
of bad faith use and registration.
Respondent has been a respondent in numerous UDRP proceedings in
which disputed domain names were transferred from Respondent to the
complainants in those cases. See ABC Liquors, Inc. v.
Previous panels have found a respondent’s use of a
confusingly similar website featuring a search engine and competing hyperlinks
constitutes a disruption of a complainant’s business. See Persohn
v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see also Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding
that the respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial
search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names). Respondent’s <shastabeverages.com>
domain name features a search engine
and hyperlinks to Complainant’s competitors in the non-alcoholic beverage
industry. The Panel finds Respondent’s
use of the disputed domain name disrupts Complainant’s beverage business and
constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant alleges, and the Panel infers, that Respondent profits from its receipt of click-through fees from its commercial search engine and competing hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds 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 <shastabeverages.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2009
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