Yogurtland Franchising, Inc. v. IT Administrator
Claim Number: FA0911001293617
Complainant is Yogurtland Franchising, Inc. (“Complainant”), represented by K. David Crockett, of Crockett & Crockett, PC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yogurtland.net>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 12, 2009.
On November 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yogurtland.net> 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 November 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 7, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on November 30, 2009.
On December 5, 2009, the Complainant submitted an Additional Submission. The Additional Submission was timely and was found to be compliant with Supplemental Rule 7.
On December 6, 2009, the Respondent submitted an Additional Submission. The Additional Submission was timely and was found to be compliant with Supplemental Rule 7.
On December 4, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that it owns a registered trademark for the name YOGURTLAND. It uses the mark for retail stores featuring self-serve frozen yogurt and frozen yogurt toppings. The mark was registered and used well before the Respondent registered the disputed domain name. The disputed domain name is identical to the Complainant’s mark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s use is not in any way authorized by the Complainant. The Respondent has never used the domain name in connection with any bona fide offering of goods and services.
On the contrary, says the Complainant, the disputed domain name resolves to a webpage listing competitors of the Complainant, and providing links to direct others to the domains of those competitors.
Thus, alleges the Complainant, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and products and services on the Respondent’s web site. The adoption of the confusingly similar domain name combined with the direction of Internet user to competitors of Complainant constitutes bad faith. The domain name at issue resolves to a “parking site.” The parking site contains links to companies who sell goods directly competitive with the trademarked goods of the Complainant.
The Respondent states that he is not disputing that the Complainant has a valid trademark. In fact he admits that he is a frequent visitor to the Complainant’s stores in his area.
The Respondent admits that the disputed domain name is identical to the Complainant’s mark. However, the Complainant did not register the dispute domain name, thus leading the Respondent to assume the domain was deemed unrelated and unnecessary in establishing and promoting the Complainant’s trademark.
The Respondent states that his original intention in registering the domain and still current intention is to create a non-commercial fan site and share photos and personal experiences at the Complainant’s stores. As a result of the Respondent's non-commercial intention, the domain's actual site development has not been a priority. However, the Respondent has had a website plan in development for some time. The Respondent provides a development plan as an exhibit.
The Respondent alleges that he has not misled consumers or tarnished the Complainant’s trademark. The disputed domain has been parked at the registrar. It is the registrar that controls what ads and content are displayed when a domain is parked. The Respondent has not made a single cent from the domain from any content or ads displayed on the site.
C. Additional Submissions
In its Additional Submission, the Complainant points out that the Respondent does not dispute that the Complainant has a valid trademark and that the disputed domain name is identical to that mark.
Further, says the Complainant, the Respondent concedes that he was actually aware of the Complainants trademark use prior to his registration of the domain name. The Respondent argues that the disputed domain name was available for registration when he registered it, and that this led him to believe that the domain name was not “necessary in establishing and promoting the Complainant’s trademark.” While that may be so, it does not follow that the Respondent’s bad faith use of the domain name does not harm the Complainant. If this were a defense to cybersquatting, there would be no means to address cybersquatting. Cybersquatting can only occur when closely related domain names are available for registration. No rule of this proceeding provides any relief to a cybersquatter on this ground.
According to the Complainant, the Respondent has done nothing with the domain for over two years, and the likelihood that he will do something with the site in the future is nil. The two year period in which Respondent did nothing is unexplained, and in the meantime he maintained a webpage at the disputed domain name to redirect Internet users presumably using their browsers to look for a fan club, to commercial websites offering other goods or services from competitors of Complainant.
The Complainant states that the only sensible reason to retain ownership is to sell the domain to Complainant in the case of a successful defense of this arbitration. The Respondent claims a post-complaint conversion which is clearly brought on only by the instant proceeding. This appears to be a common subterfuge: cybersquat until you are caught, and hope for an offer of cash, but if challenged quickly convert the website to a minimally functioning fan site and claim First Amendment rights. This should not be tolerated, and rules applied to previous UDRP cases impose substantial burdens of proof on respondents experiencing the epiphany of a post-complaint fan site conversion.
Finally, the Respondent’s evidence of intent to create a fan site is minimal: two pages of an outline that could have been created in minutes to support his Response with no indication as to when it was created. But this is immaterial given that the Respondent never acted on his intent by initiating a legitimate use before the Complainant filed the Complaint in this case.
The Complainant notes that the Respondent asserts “The Respondent has not even attempted to extort, sell or profit from the disputed domain name.” This is a false assertion. The Respondent’s web site includes a clear offer to sell the domain. This offer to sell was found on the Respondent’s web site both before and after filing of this Complaint. This false statement is a clear sign of bad faith which can be ascribed to the Respondent’s continued use of the domain name
In his Additional Submission, the Respondent stresses that he never created a web page at the disputed domain name. The material displayed there is created automatically by the registrar as part of its parking service. Since he has no control of advertising displayed on the page, the Respondent believes that this clearly refutes the Complainant’s argument of bad faith.
Further, the Respondent refutes the Complainant’s assertion that the evidence provided regarding his intent to develop a website at the disputed domain name is minimal. The document submitted with the Response is clearly noted as an outline and not the actual implementation. The Respondent believes that the actual implementation code is proprietary. However, due to the nature of the case, the Respondent will include part of an actual programming file that has been created as part of the website plans. An exhibit is attached.
The Complainant owns a registered trademark for the name YOGURTLAND.
The disputed domain name is identical to the Complainant’s mark, and it was registered after the registration of the mark.
The Respondent is well aware of the Complainant’s product offering and the web site at the disputed domain name contains links to the products offered by the Complainant’s competitors.
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 Complainant has
established that it holds a trademark registration for its YOGURTLAND
mark. This is sufficient to establish
rights in a mark under Policy ¶ 4(a)(i). See 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.”); see also
The disputed domain
name is clearly identical to the Complainant’s mark, since it consists of the
mark plus the generic top-level domain name “.net”. See Little Six, Inc. v. Domain For
The Respondent does not dispute the Complainant’s allegations regarding this element of the Policy.
The Respondent alleges that he intends to use the disputed domain name to create a website containing consumer comments regarding the Complainant’s products. He argues that this establishes his legitimate interest in the disputed domain name. He presents a layout and development plan for such a website. But the layout and development plan are very brief generic text descriptions. There are no graphic layouts, mock web pages, design concepts, or anything else that would indicate that some significant effort had been put into planning such a web site. With his Additional Submission, the Respondent presents one page of program code. This appears to be a fairly generic code component, which is not obviously associated with the alleged plans for the web site at the disputed domain name. Consequently, the Panel finds that the Respondent has not presented sufficient evidence to establish demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as required under Policy ¶ 4(c)(i).
On the contrary, the Complainant has established that the disputed domain name resolves to a website listing the Complainant’s competitors in the frozen yogurt retail stores industry. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
alleges that he does not have control over the parked website and that the
registrar adds the parked advertisements and hyperlinks. But this Panel agrees with previous panels
that have held that it does not matter whether the domain name is parked or
whether Respondent retains complete control of the disputed domain name. The Panel finds the Respondent to be ultimately responsible
for the website’s content. See St. Farm Mutual Auto. Insr.
Thus the Panel holds that the Respondent does not have rights or legitimate interests in the dispute domain name.
The Complainant has established that the Respondent used the disputed domain name to point to a web site containing links to competitors of the Complainant. Thus Internet users interested in the Complainant and its frozen yogurt retail stores may become confused as to the Complainant’s affiliation with and sponsorship of the disputed domain name and the resolving website. The Panel believes that, despite his allegations to the contrary, the Respondent attempted to profit from this confusion. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
As noted above, the Respondent alleges that he does not have control over the parked website. But this does not matter: the Respondent is ultimately responsible for the website’s content. Thus the Panel finds that the Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yogurtland.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 9, 2009
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