Organic Liaison, LLC v. Ian House
Claim Number: FA1005001324997
Complainant is Organic Liaison, LLC (“Complainant”), represented by Mitchell
Fuerst, of Fuerst & Ittleman, PL, Florida, USA. Respondent is Ian House (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <organicliason.com>, registered with GoDaddy.com, Inc.
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 18, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <organicliason.com> domain name is registered with GoDaddy.com, Inc. and that 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 May 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@organicliason.com by e-mail. Also on May 27, 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 22, 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 "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 <organicliason.com> domain name is confusingly similar to Complainant’s ORGANIC LIAISON mark.
2. Respondent does not have any rights or legitimate interests in the <organicliason.com> domain name.
3. Respondent registered and used the <organicliason.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Organic Liaison, LLC, is a private marketer and producer of organic food and supplement-based weight loss programs and products. Complainant has filed two trademark applications with the United States Patent and Trademark Office (“USPTO”) for its ORGANIC LIAISON mark on August 31, 2009, but does not yet own a trademark registration. Complainant has submitted evidence to show that it possessed common law rights in its ORGANIC LIAISON mark prior to Respondent’s registration of the disputed domain name on February 25, 2010.
Respondent, Ian House, registered the <organicliason.com> domain name on February 25, 2010. Respondent’s disputed domain name resolves to a website that looks similar to Complainant’s official <organicliaison.com> domain name, and contains third-party hyperlinks to various dietary supplement products in competition with Complainant.
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 has submitted evidence to show that it has filed
two trademark applications with the USPTO for its ORGANIC LIAISON mark on
August 31, 2009. While this evidence
goes to show that Complainant may have common law rights in its mark, the Panel
finds that simply applying for a trademark registration is not sufficient to
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 has
submitted evidence to show that it has been using its ORGANIC LIAISON mark
since it registered its official <organicliaison.com> domain name on
September 15, 2008. Complainant contends
that since that time it has been preparing content and product lines for its
website which opened to the public on February 25, 2010. Complainant has also submitted several
articles that were written about Complainant’s company on the day that
Complainant’s owner, Kirstie Alley, appeared on the Oprah Winfrey Show to advertise
Complainant Company and its official website.
Complainant argues that these articles and appearances by Complainant’s
founder on the Oprah Winfrey Show as well as her own television show are
sufficient to show that Complainant has established rights in its ORGANIC
LIAISON mark. 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 contends that Respondent’s <organicliason.com> domain name is confusingly similar to Complainant’s ORGANIC LIAISON mark. Complainant argues that the only difference between the disputed domain name and its mark is that Respondent left out the second letter “i” from Complainant’s mark and added the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the disputed domain name differs by only one letter, deletes the space between the terms of the mark, and the domain name adds the gTLD “.com.” See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have any rights or legitimate interests in the <organicliason.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <organicliason.com> domain name pursuant to Policy ¶ 4(c). See 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
The WHOIS information for the disputed domain name
identifies “Ian House” as the registrant, and Respondent has not offered any
evidence indicating that it is commonly known by the disputed domain name. Complainant argues that Respondent is not a
licensee of Complainant, and that Complainant has not granted Respondent
permission to use its mark or business name in any way. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name);
see also
Further, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain name to redirect Internet users to the websites and products of Complainant’s competitors while receiving click-through revenue from such use. The Panel finds that Respondent’s use of the <organicliason.com> domain name to display links to the products and services of Complainant’s competitors, presumably for financial gain, is not a use in connection with 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 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Complainant argues that Respondent is taking advantage of
Internet users that are trying to reach Complainant’s official
<organicliaison.com> website by using a common misspelling of the
Complainant’s ORGANIC LIAISON mark. The
Panel finds that Respondent’s engagement in typosquatting, through Respondent’s
registration and use of the <organicliason.com>
domain name, is evidence that Respondent lacks rights and legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <organicliason.com>
domain name is similar in appearance to Complainant’s official website and
contains links to the competitors of Complainant in the weight loss product
market. Complainant’s business is being
disrupted by Respondent’s diversion scheme through a nearly identical website.
Therefore, the Panel finds that Respondent’s use of the disputed domain name to
redirect Internet users to the websites and products of Complainant’s
competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s
registration and use of the disputed domain name, which displayed a website
virtually identical to the complainant’s website, constituted bad faith
pursuant to Policy ¶ 4(b)(iii)); see also
Complainant argues that Respondent registered and used the disputed domain name in bad faith because it is using the disputed domain name to intentionally attract Internet users to Respondent’s website for commercial gain. Complainant argues that Respondent receives click-through fees for the third-party links that are displayed on Respondent’s website, and that such use is evidence of bad faith. The Panel agrees and finds that Respondent registered and has used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also argues that Respondent took advantage of Complainant’s founder appearing on the Oprah Winfrey Show in conjunction with the opening of Complainant’s official website, both of which took place on February 25, 2010 to register the disputed domain name. Complainant argues that such opportunistic bad faith is further evidence that Respondent registered and used the disputed domain name in bad faith because Respondent registered the disputed domain name on the same day that Complainant’s founder appeared on a widely publicized television show. The Panel finds that Respondent’s actions in registering the disputed domain name on the same day that Complainant launched its official website and appeared on the Oprah Winfrey Show is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Lastly, Complainant contends that Respondent registered and
used the disputed domain name in bad faith because Respondent engaged in
typosquatting through its registration of the <organicliason.com> domain name. Complainant argues that by misspelling
Complainant’s mark by one letter Respondent has provided evidence of bad faith
registration and use. The Panel finds
that Respondent has engaged in typosquatting, and that such use of
typographical errors for Respondent’s benefit is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (finding the respondent registered and used the domain name in bad
faith because the respondent “created ‘a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s web site or location’. . . through Respondent’s persistent
practice of ‘typosquatting’”); see also
Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form).
The Panel finds that 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 <organicliason.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 30, 2010
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