E&H Distributing, LLC v. AAA Waranty
Claim Number: FA1001001304769
Complainant is E&H Distributing, LLC (“Complainant”), represented by Rebecca
A. Finkenbinder of McNees Wallace & Nurick LLC, Pennsylvania,
USA. Respondent is AAA Waranty
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <usfservice.com>, registered with Wild West Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 26, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 27, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <usfservice.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ usfservice.com. Also on February 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <usfservice.com>, is confusingly similar to Complainant’s U.S. FOODSERVICE mark.
2. Respondent has no rights to or legitimate interests in the <usfservice.com> domain name.
3. Respondent registered and used the <usfservice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, E&H Distributing, LLC, operates as a wholesale distributer of meat and other food products. Complainant registered its U.S. FOODSERVICE mark with the United States Patent and Trademark Office (“USPTO”) on November 22, 2005 (Reg. No. 3,017,715) and uses this mark in connection with its wholesale food distribution services. Complainant uses a distinct logo in conjunction with its U.S. FOODSERVICE mark in order to conduct its wholesale distribution marketing.
Respondent registered the <usfservice.com> domain name January 28, 2009. The disputed domain name resolves to a websites that mimics Complainant’s logo in color and stylization and promotes competing meat products and food distribution services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant demonstrated its rights in
the mark under Policy ¶ 4(a)(i) by setting forth evidence of its registration
of the U.S. FOODSERVICE mark (Reg. No. 3,017,715 issued November 22, 2005) with
the USPTO.
The <usfservice.com> domain name contains Complainant’s U.S. FOODSERVICE mark while abbreviating the word “food” and adding the generic top-level domain “.com.” The addition of a generic top-level domain is irrelevant under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Furthermore, the abbreviation of the “food” term does not sufficiently differentiate the disputed domain name from the mark. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights to and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant made a prima facie case to supports its allegations pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, this Panel, in its discretion, examines the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “AAA Waranty.” Furthermore,
Complainant argues Respondent is not permitted or authorized to use
Complainant’s mark. The Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding
no rights or legitimate interests because the respondent is not commonly known
by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
Respondent’s disputed domain name
resolves to a website mimicking Complainant’s logo in color and
stylization and promoting competing meat products and food distribution
services. The
Panel finds that Respondent is passing itself off as Complainant in order to sell
competing products. The Panel finds this
use of the disputed domain name does not qualify as a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See see also Gardens
Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003)
(finding that the respondent used a domain name for commercial benefit by
diverting Internet users to a website that sold goods and services similar to
those offered by the complainant and thus, was not using the name in connection
with a bona fide offering of goods or services nor a legitimate
noncommercial or fair use); see
also Dream Horse Classifieds v.
Mosley, FA 381256 (Nat.
Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off
as the complainant by implementing a color scheme identical to the
complainant’s was evidence that respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website offering
wholesale food distribution services that compete with Complainant. Respondent’s use of the disputed domain name
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the
respondent registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business).
It appears that
Respondent is using the confusingly similar domain name to sell products that
compete with Complainant and that Respondent is likely profiting through such
use. Additionally, the website resolving to
Respondent’s disputed domain name mimics Complainant’s logos in an attempt by
Respondent to pass itself off as Complainant.
The Panel finds this use of the disputed domain name is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31,
2002) (“Respondent is using the domain name at issue to resolve to a website at
which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usfservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 16, 2010
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