Ford's Produce Co., Inc v. Eric Botner
Claim Number: FA0910001288827
Complainant is Ford's Product Co., Inc. (“Complainant”), represented by JT Mlinarcik, of Manning, Fulton &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earthfamilyfood.com>, registered with Godaddy.com, 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.
Joel M.Grossman, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2009.
On October 12, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <earthfamilyfood.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 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.
A timely Response was received and determined to be complete on November 3, 2009.
On November 9, 2009 a timely Additional Submission was received from Complainant. On November 13, 2009 a timely Additional Submission was received from Respondent.
On November 6, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first asserts that it has rights in the “earth family organics” trademark. Complainant filed for this trademark on August 30, 2004, and began using the mark in commerce on January 17, 2006. Complainant obtained the trademark from the USPTO on May 16, 2006. Complainant registered the domain name, and launched the website “earthfamilyfoods.com” in August 2005. Complainant further asserts that the Respondent’s domain name, “earthfamilyfood.com” is confusingly similar to Complainant’s “earth family organics” mark, and confusingly similar to Complainant’s “earthfamilyfoods.com” domain name, as it is identical except for deleting the “s.” Complainant next alleges that Respondent has no rights or legitimate interests in the name. Complainant states that Respondent’s rights are “preempted” by Complainant’s prior registration of the “earthfamilyfoods.com” domain name. Complainant further argues that Respondent is not making any legitimate noncommercial or fair use of the domain name. Instead, Respondent is confusing Complainant’s customers and diverting them to Respondent’s website, by means of a virtually identical domain name. Finally, Complainant argues that Respondent registered and is using the domain name in bad faith. Complainant points out that Respondent’s clear intention in selecting the domain name was to confuse Internet users and bring traffic to Respondent’s website. Complainant asserts that Respondent at one time was willing to change the domain name as it was aware of the conflict, but then changed its mind and refused to do so.
Respondent states that it recognizes the similarity between the two domain names, but does not agree that the similarity causes confusion. Respondent further argues that “food product sales are too broad of a market to grant name exclusivity solely on a prior use basis…the Complainant’s use was not and is not significant enough within the Internet to warrant such exclusivity.” Respondent next contends that the domain name is logical as the business operated by Respondent has a registered d/b/a of “Earth Family Food.” Respondent states that while it was aware of Complainant’s domain name at the time it registered its own, similar, domain name, it did not intend to divert Internet users from Complainant’s site to its own. Respondent states as follows: “During April of 2006 Mr. Botner [Respondent’s President and CEO] researched names for the wholesale division, focusing on names with ‘Earth Family’ in them. During his research Mr. Botner looked at the [Complainant’s] website for earthfamilyfoods.com and found a one-page website with a single product. Mr. Botner saw no conflict between the product offered and the products he was already offering and intended to offer.” Because Respondent did not see any conflict, and because it never intended to divert Complainant’s customers, it contends that it did not register and is not using the domain name in bad faith.
C. Additional Submissions
In its Additional Submission Complainant asserts that Respondent has conceded similarity, noting that the addition or deletion of a single letter is of no significance. Complainant further points out that Respondent is not known by the domain name, which serves as a d/b/a but nothing more. Complainant points out that notwithstanding the d/b/a, Respondent is not known by the domain name, and it has no products branded “earth family food.” Complainant also challenges Respondent’s argument that because Respondent has a greater Internet presence it cannot be challenged by Complainant. Complainant reiterates its point that the Respondent boldly admits that it was aware of Complainant’s domain name and business before it registered its similar domain name, and that the fact that Respondent’s CEO, Mr. Botner “saw no conflict” is wholly irrelevant.
In Respondent’s Additional Submission it points out that the trademarks which Complainant is trying to protect is not “earth family foods,” but “earth family” and “earth family organics.” Thus the similarity between the Respondent’s domain name and the Complainant’s domain name is not the key issue, rather it is the similarity between the Respondent’s domain name and the Complainant’s trademarks, and the similarity is not as great. Respondent further points out that the relative size and traffic of the two websites is important: since a larger site cannot be presumed to be taking business away from a smaller site. Respondent further points out that the trademarks were not issued by the USPTO until after it registered its domain name. Finally, Respondent restates its argument that it did not act in bad faith merely because Mr. Botner had been aware of the Complainant’s website prior to registering the Respondent’s domain name.
The Panel finds that (1) the domain name is identical to or confusingly similar to a mark in which the Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 determines that Complainant has rights in the “earth family organics” mark dating back to the filing date of its trademark registration on August 30, 2004, which predates the filing of the Respondent’s domain name. As have prior panels, the Panel holds that the effective date for trademark registration is the filing date. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007). The Panel also finds that the domain name is confusingly similar to the mark, as it merely replaces the generic term “organics” with “food.” See Am. Eagle Outfitters, Inc. v. Admin. FA 473826 (Nat. Arb. Forum June 22, 2005). For these reasons the Panel finds that the domain name is identical to or confusingly similar to a mark in which Complainant has rights.
The Panel finds that Complainant has made a prima facie case that Respondent lacks
rights and legitimate interests in the name, and the burden on this point
shifts to Respondent. See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18,
2006). The Panel finds that Respondent is not commonly known by the domain
name. The WHOIS information identifies Respondent as “Eric Botner,” clearly not
similar to the domain name. The domain name is in fact a d/b/a for Respondent’s
business, and none of its products use the name. Further, Complainant has not
authorized Respondent to use its mark. Additionally, because the Respondent’s
domain name is so similar to Complainant’s domain name, and because Respondent
clearly admits that it was aware of the Complainant’s domain name prior to
registering its own, quite similar, name, the Panel is compelled to agree with
Complainant that Respondent is not using the name for the bona fide offering of goods and services, but instead is using the
name for commercial benefit in order to divert Internet users interested in
organic foods from Complainant’s website
to Respondent’s. The Panel therefore concludes that Respondent has no rights or
legitimate interests in the domain name.
Respondent admits that it was aware of Complainant’s website and its offering of products prior to registering the name. While Respondent contends that its CEO “saw no conflict” in the name, that, of course, is not the test. As noted above, the Panel also agrees with Complainant that Respondent is using the domain name, which is confusingly similar to Respondent’s mark, for commercial gain to attract Internet users interested in Complainant’s organic food products to its own website. This use makes it clear that the name was both registered in bad faith and is being used in bad faith. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000); see also Am. Online, Inc. v Tencent Commc’ns Corp. FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by respondent.) For these reasons the Panel concludes that the domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <earthfamilyfood.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: November 20, 2009
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