Organic Liaison, LLC v. Maho Jakotyc
Claim Number: FA1005001324980
Complainant is Organic
Liaison, LLC (“Complainant”), represented by Mitchell Fuerst, of Fuerst & Ittleman, PL, Florida,
USA. Respondent is Maho Jakotyc (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <organicliasons.com>, <organiclaison.com>, and <organicliasion.com>, registered with Above.com Pty Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2010.
On May 17, 2010 and May 26, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 June 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@organicliasons.com. postmaster@organiclaison.com, and postmaster@organicliasion.com. Also on June 7, 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 June 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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 (the "Rules") "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names are confusingly similar to Complainant’s ORGANIC LIAISON mark.
1. Respondent does not have any rights or legitimate interests in the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names.
2. Respondent registered and used the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Organic Liaison, LLC, is a private labeler and marketer of an organic food and supplement-based weight loss program. Complainant sells organic foods and lifestyle support products. Complainant registered the <organicliaison.com> domain name on September 15, 2008 and opened its resolving website to the public on February 25, 2010. Complainant has also filed trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ORGANIC LIAISON mark (e.g., Serial No. 77816288 filed on August 31, 2009). Complainant provides evidence that it has established common law rights in the ORGANIC LIAISON mark.
Respondent, Maho Jakotyc, registered the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names on February 27, 2010. The disputed domain names resolve to websites featuring links to third-party sites, some of which provide products and services that directly compete with Complainant’s business.
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 does not yet hold a trademark registration for
the ORGANIC LIAISON mark. The Panel
finds that applying for a trademark registration alone does not sufficiently
establish rights in a mark under Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply,
FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s
pending trademark applications did not establish rights because “an application
for [a] mark is not per se sufficient to establish rights [in] a
trademark for the purposes of the [Policy]”); see also
Complainant argues it has acquired common law rights in the
ORGANIC LIAISON mark through sufficient secondary meaning associated with the
mark. Complainant registered the
<organicliaison.com> domain name on September 15, 2008. On February 25, 2010, after sixteen months of
preparation and planning, Complainant opened the website resolving from its
<organicliaison.com> domain name to the public. Complainant also submitted articles that were
written about Complainant’s products and services. In addition, Complainant provides evidence
that its founder, Kirstie Alley, appeared on the Oprah Winfrey Show to discuss
Complainant’s products. The Panel finds that Complainant has submitted
sufficient evidence showing that it possesses common law rights in its ORGANIC
LIAISON mark under Policy ¶ 4(a)(i) based on its
continuous use of the mark since September 15, 2008. See Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001)("setting aside the contrary statements about the date
of Complainant's first actual use, the mere claim of use is not enough to
establish rights. Use must be in a manner sufficiently public to create some
public awareness."); see also Goepfert v.
Complainant claims Respondent’s <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names are confusingly similar to its ORGANIC LIAISON mark. In the <organicliasons.com> and <organiclaison.com> domain names, Respondent merely omits a letter “i” in the second word of Complainant’s mark. Likewise, in the <organicliasion.com> domain name, Respondent inverts the letters “i” and “s” in the second word in Complainant’s mark. Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in each of the disputed domain names. The Panel finds these changes and additions to Complainant’s mark do not sufficiently distinguish Respondent’s disputed domain names from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names are confusingly similar to Complainant’s ORGANIC LIAISON mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests in the disputed domain name. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to submit a Response, the Panel will analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information lists “Maho Jakotye” as the registrant of the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
In addition, the disputed domain names resolve to websites
featuring links to third-party sites, some of which provide weight loss
products and programs that directly compete with Complainant’s products and
services. Respondent most likely profits
from this use through the receipt of pay-per-click fees associated with the
displayed links. The Panel finds
Respondent’s use of the confusingly similar domain names to receive
pay-per-click fees does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
Complainant also alleges Respondent’s use of the disputed
domain names is typosquatting.
Respondent’s disputed domain names are common misspellings of the
“liaison” portion of Complainant’s mark.
The Panel finds that Respondent’s use of domain names that incorporate
common misspellings of the ORGANIC LIAISON mark to redirect Internet users
seeking Complainant’s business to Respondent’s websites is further evidence
that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s use of the <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names to redirect Internet users to websites that provide links to third-party websites, including links to Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel also finds Respondent is using the disputed domain
names to attempt to intentionally attract, for commercial gain, Internet users
to its websites, by creating a likelihood of confusion with Complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of Respondent’s
website. As previously discussed,
Respondent’s disputed domain names are confusingly similar to Complainant’s
mark. Respondent also profits from the
use of these domain names through the receipt of pay-per-click fees. The Panel finds this behavior constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA
536190 (Nat. Arb. Forum
Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees
for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
Finally, Respondent has engaged in typosquatting through its use of common misspellings of Complainant’s ORGANIC LIAISON mark in the disputed domain names. Therefore, the Panel finds this behavior provides further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied 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 <organicliasons.com>, <organiclaison.com>, and <organicliasion.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 1, 2010
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