Goya Foods, Inc. v. Top5 Network
Claim Number: FA1003001315209
Complainant is Goya Foods, Inc. (“Complainant”), represented by John
M. Rannells, of Baker and Rannells PA,
The domain name at issue is <goyarecipes.com>, registered with Moniker.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 30, 2010, the
Forum served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 19, 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@ goyarecipes.com. Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "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. Respondent’s <goyarecipes.com> domain name is confusingly similar to Complainant’s GOYA mark.
2. Respondent does not have any rights or legitimate interests in the <goyarecipes.com> domain name.
3. Respondent registered and used the <goyarecipes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goya, Foods, Inc.,
provides a variety of food products under its GOYA mark. Complainant markets its food products through
its <goya.com> domain name. Complainant holds multiple trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its GOYA mark (e.g., Reg. No. 764,033
Respondent, Top5Network, registered the <goyarecipes.com> domain name on
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 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. 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 that 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 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.
Complainant contends it has established rights in the GOYA
mark. Complainant holds multiple
trademark registrations of the GOYA mark with the USPTO (e.g., Reg. No. 764,033 issued
Complainant alleges Respondent’s <goyarecipes.com> domain name is confusingly similar to
Complainant’s GOYA mark. The disputed
domain name includes Complainant’s entire mark and adds the descriptive term
“recipes,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the alterations are
insufficient to adequately distinguish the disputed domain name from
Complainant’s mark. The Panel finds
domain name is confusingly similar to Complainant’s GOYA mark under Policy ¶
4(a)(i). See Gillette
Co. v. RFK Assocs.,
FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the
additions of the term “batteries,” which described the complainant’s products,
and the generic top-level domain “.com” were insufficient to distinguish the
respondent’s <duracellbatteries.com> from the complainant’s DURACELL
mark); see also Marriott Int’l, Inc. v.
Café au lait, FA 93670, (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <goyarecipes.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Although Respondent has failed to respond to these proceedings, the Panel will nevertheless consider the Policy ¶ 4(c) factors to determine if Respondent holds any rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known
by the <goyarecipes.com>
domain name. The WHOIS information lists
Respondent as “Top5Network,” and Complainant contends Respondent is not
authorized to use its GOYA mark. Thus,
the Panel finds Respondent is not commonly known by the <goyarecipes.com> domain name pursuant to Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts
Worldwide, Inc. v.
that Respondent is using the <goyarecipes.com>
domain name to display links to third-party
websites appearing to compete with Complainant in the food products industry. The Panel finds Respondent’s use of the
disputed domain name is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v.
Power of Choice Holding Co.,
FA 621292 (Nat. Arb.
Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <goyarecipes.com> domain name to display links to third-party websites that compete with Complainant. The Panel agrees with Complainant’s contentions and finds that Respondent’s competitive use of the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also David Hall Rare Coins v. Texas Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant also contends that Respondent is presumably
receiving click-through or referral fees for its competing use of the disputed
domain name. The Panel finds Respondent’s is attempting to receive commercial
gain from its competing use of the <goyarecipes.com>
domain name, which is evidence of its bad faith
registration and use of the disputed
domain name pursuant to Policy ¶
4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25,
2006) (finding that the respondent’s use of the <arizonashuttle.net>
domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to the respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goyarecipes.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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