Riviana Foods Inc. v. Sandra Yackolow
a/k/a Marblehead Consulting
Claim Number: FA0211000129133
PARTIES
Complainant
is Riviana Foods Inc., Houston, TX
(“Complainant”) represented by Paul Van
Slyke, of Locke Liddell & Sapp
LLP. Respondent is Sandra Yackolow a/k/a Marblehead Consulting, Marblehead, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <successrice.us>,
registered with Nitin Networks d/b/a ABR Products Inc.
PANEL
On
December 19, 2002 pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 6, 2002; the Forum received a hard copy of the
Complaint on November 8, 2002.
On
November 7, 2002, Nitin Networks d/b/a ABR Products Inc. confirmed by e-mail to
the Forum that the domain name <successrice.us>
is registered with Nitin Networks d/b/a ABR Products Inc. and that Respondent
is the current registrant of the name. Nitin
Networks d/b/a ABR Products Inc. has verified that Respondent is bound by the Nitin
Networks d/ba ABR Products Inc. registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with the
U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
November 14, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 4, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<successrice.us>
domain name is confusingly similar to Complainant's SUCCESS mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used the SUCCESS mark in
relation to its rice products since 1970.
Complainant is the volume leader in the United States rice market and
sells more rice products than any other United States company. Complainant’s SUCCESS brand rice is the
leading brand of instant boil-in-bag rice and the second leading brand of
instant rice in the United States.
Complainant promotes its SUCCESS brand rice through a variety of
mediums, including the Internet.
Complainant holds the registration for <successrice.com> and uses
the domain name for a website that provides a broad range of information to
consumers about SUCCESS rice, including recipes, storage tips, and nutritional
information. The website has been
referenced in national magazines such as Cooking Light, Prevention
Magazine, and Southern Living.
Complainant’s SUCCESS mark is registered with the United States Patent
and Trademark Office as Registration Number 909,247.
Respondent registered the disputed domain
name <successrice.us> on May 4, 2002. Respondent is currently using the disputed domain name for a
website proclaiming to be dedicated to lobbying for Red Sox player Jim Rice’s
induction into the baseball Hall of Fame.
Respondent has registered 1500 domain names within the “.us” registry,
for example, <blistex.us>, <biore.us>, and
<bluecrossandblueshield.us>.
Complainant offered to buy the domain name registration from Respondent
for $700, but Respondent turned it down and stated that $7500 would be an
acceptable offer.
DISCUSSION
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 the 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.
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; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the SUCCESS mark through continuous use since 1970 and registration
with the United States Patent and Trademark Office.
Respondent’s <successrice.us>
domain name is confusingly similar to Complainant’s SUCCESS mark because the
domain name incorporates Complainant’s entire mark and merely adds the generic
term “rice.” Rice is the only product
Complainant sells under the SUCCESS mark, therefore associating the word rice
with Complainant’s SUCCESS mark describes Complainant’s business and adds no
distinct characteristics to the disputed domain name capable of overcoming a
claim of confusing similarity. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore, the Panel
is permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); 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”).
Furthermore, based on Respondent’s
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent never submitted a Response nor
provided the Panel with evidence to suggest otherwise).
Respondent has not come forward with any
evidence to establish that it has a trademark for SUCCESS RICE or that it is
commonly known by the mark or disputed domain name <successrice.us>. Complainant’s investigation has revealed
that Respondent has registered numerous domain names that incorporate the marks
of other entities such as <blistex.us> and <biore.us> giving rise
to the inference that Respondent is in the business of domain name sales and
therefore not a holder of a trademark for SUCCESS RICE, and that Respondent is
not commonly known as either SUCCESS RICE or <successrice.us>. As a result, the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(i), and ¶
4(c)(iii) respectively. See CDW Computer Centers, Inc. v. The Joy
Comp. FA114463 (Nat.
Arb. Forum July 25, 2002) (finding that, because Respondent did not come
forward with a Response, the Panel could infer that Respondent had no trademark
or service marks identical to <cdw.us> and therefore had no rights or
legitimate interests in the domain name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Respondent has made no use of the
disputed domain name other than to attempt to sell its rights to
Complainant. Based on the fact that
Respondent registered 1500 domain names in the “.us” registry, some of which incorporate
the well-known marks of other entities, it can be inferred that Respondent is
in the business of selling domain name registrations. Moreover, in light of Respondent’s other domain name
registrations and its failure to respond in this dispute, the website located
at <successrice.us>, purporting to lobby for the induction of Red
Sox player Jim Rice into the baseball Hall of Fame, can be dismissed as an
attempt by Respondent to disguise its real purpose of registering the domain
name in order to sell its rights. As a
result, the Panel finds that Respondent’s use of the <successrice.us>
domain name is not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iv). See Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling it); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent has
registered numerous domain names that infringe on the trademark rights of
others, and the fact that Respondent turned down Complainant’s initial offer to
purchase the domain name registration from Respondent for $700 in lieu of
greater consideration, it can be inferred that Respondent registered the domain
name for the primary purpose of selling the registration for profit. This type of behavior is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding bad faith based on the apparent willingness of the Respondent to
sell the domain name in issue from the outset, albeit not at a price reflecting
only the costs of registering and maintaining the name); see also Moynahan v. Fantastic Sites, Inc.,
D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where Respondent offered to
sell the domain name to Complainant for $10,000 when Respondent was contacted
by Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <successrice.us>
be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 30, 2002
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