Sysco Corporation v. Private Registrations Aktien Gesellschaft
Claim Number: FA1003001315533
Complainant is Sysco Corporation (“Complainant”), represented by Nathan
C. Belzer of Belzer PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <syscobluecube.com>, registered with Network Solutions, 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 March 25, 2010.
On March 26, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <syscobluecube.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, 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 March 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@syscobluecube.com. Also on March 26, 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 April 21, 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 "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, <syscobluecube.com>, is confusingly similar to Complainant’s SYSCO mark.
2. Respondent has no rights or legitimate interests in the <syscobluecube.com> domain name.
3. Respondent registered and used the <syscobluecube.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sysco
Corporation, uses the SYSCO mark in connection with food distribution
services. Complainant holds numerous
registrations of the SYSCO mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No.
969,024 issued September 25, 1973).
Respondent, Private Registrations Aktien Gesellschaft, registered the <syscobluecube.com> domain name August 25, 2006. The disputed domain name resolves to a website that displays hyperlinks to third-party websites.
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.
Complainant supported its allegations that the disputed
domain name is confusingly similar to a mark in which it has protected rights
by producing copies of its registration documents for the SYSCO mark from the
USPTO (e.g.,
Reg. No. 969,024 issued September 25, 1973).
Accordingly, the Panel finds that Complainant established rights in the
SYSCO mark under Policy ¶ 4(a)(i).
Respondent’s <syscobluecube.com>
domain name contains Complainant’s entire SYSCO mark, adds the descriptive
terms “blue” and “cube,” and adds the generic top-level domain (“gTLD”)
“.com.” The terms “blue” and “cube”
describe the logo Complainant uses with its SYSCO mark. The Panel finds that these additions to
Complainant’s mark do not sufficiently distinguish the disputed domain name
from Complainant’s mark. Therefore, the
Panel finds that the <syscobluecube.com>
domain name is confusingly similar to Complainant’s SYSCO mark under Policy ¶
4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding
confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis).
The Panel finds that the
disputed domain name is confusingly similar to Complainant’s protected mark;
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing to supports its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden of proof then shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent from whom no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
This Panel also reviews the proof submitted to determine if evidence in the record shows any basis for finding that Respondent does have rights in the disputed domain name. The WHOIS information for the <syscobluecube.com> domain name lists “Private Registrations Aktien Gesellschaft” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name. Respondent has not submitted any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is not commonly known by the <syscobluecube.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent’s <syscobluecube.com> domain name resolves to a website that displays hyperlinks to third-party websites. In such circumstances, the Panel is permitted to presume that Respondent receives click-through fees for these hyperlinks. The Panel finds that Respondent’s use of the <syscobluecube.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 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).
The Panel finds that Respondent has no rights or legitimate interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Since August 25, 2006, when Respondent registered the <syscobluecube.com> domain name, the
disputed domain name has resolved to a website that features hyperlinks to
third-party websites. The Panel finds
that Respondent’s use of the confusingly similar disputed domain name creates a
likelihood of confusion as Complainant’s affiliation with the disputed domain
name. The Panel further finds that
Respondent is commercially gaining from this likelihood through its presumed
receipt of click-through fees. This circumstance supports findings of bad faith
registration and use under Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
The Panel finds that
the evidence shows that Respondent acted in bad faith in registering and using
the disputed domain name; 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 <syscobluecube.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 3, 2010
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