Riviana Foods Inc. v. Sandra Yackolow a/k/a Marblehead Consulting
Claim Number: FA0211000129133
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.
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.
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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent failed to submit a Response.
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.
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.
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page