Foster and Smith, Inc. v. Texas International Property Associates
Claim Number: FA1009001345121
Complainant is Foster and Smith, Inc. ("Complainant"), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Texas International Property Associates ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <drsfostersmithe.com> and <drsfostermith.com>, registered with COMPANA, LLC.
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 September 3, 2010; the National Arbitration Forum received payment on September 7, 2010.
On September 10, 2010, COMPANA, LLC confirmed by e-mail to the National Arbitration Forum that the <drsfostersmithe.com> and <drsfostermith.com> domain names are registered with COMPANA, LLC and that Respondent is the current registrant of the names. COMPANA, LLC has verified that Respondent is bound by the COMPANA, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@drsfostersmithe.com and postmaster@drsfostermith.com. Also on September 20, 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 October 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
1. Respondent’s <drsfostersmithe.com> and <drsfostermith.com> domain names are confusingly similar to Complainant’s DOCTORS FOSTER AND SMITH mark.
2. Respondent does not have any rights or legitimate interests in the <drsfostersmithe.com> and <drsfostermith.com> domain names.
3. Respondent registered and used the <drsfostersmithe.com> and <drsfostermith.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Foster and Smith, Inc., was incorporated in Wisconsin in 1983 and is a pet care product retailer. Complainant registered the domain <drsfostersmith.com> on July 11, 1996. Complainant holds multiple trademark registrations for its DOCTORS FOSTER AND SMITH mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,477,646 issued August 14, 2001).
Respondent, Texas International Property Associates, registered the disputed domain name <drsfostermith.com> on November 27, 2004 and <drsfostersmithe.com> on June 10, 2005. Respondent’s disputed domain names resolve to a website featuring links to other websites, some of which are in direct competition with Complainant’s pet care supply 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 contends it has established rights in the DOCTORS FOSTER AND SMITH mark. Previous panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant holds multiple trademark registrations of the DOCTORS FOSTER AND SMITH mark with the USPTO (e.g. Reg. No. 32,477,646 issued August 14, 2001). Therefore, the Panel finds Complainant has established rights in the DOCTORS FOSTER AND SMITH mark under Policy ¶ 4(a)(i) through Complainant’s trademark registration.
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s DOCTORS FOSTER AND SMITH mark. The disputed domain names differ from Complainant’s mark only by the abbreviation of a word “doctors”, the deletion of spaces, the addition or deletion of a single letter, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the abbreviation of a word fails to properly distinguish the disputed domain names from Complainant’s mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel finds that the deletion of a single letter “s” does not properly distinguish the disputed domain name from Complainant’s mark. See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). The Panel finds that the addition of a single letter “e” does not properly distinguish the disputed domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the deletion of spaces fails to properly distinguish the disputed domain names from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that the addition of a gTLD fails to properly distinguish the disputed domain name from the Complainant’s mark. See 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.”). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s DOCTORS FOSTER AND SMITH mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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 Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have legitimate rights or interests in the disputed domain names. 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.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names. Complainant argues that Respondent has not presented any evidence that would support a finding that Respondent is commonly known by the disputed domain names. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Texas International Property Associates” which is not similar to the disputed domain names. Complainant asserts that it has not authorized or licensed Respondent to use or register the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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 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).
Respondent uses the disputed domain names to redirect Internet users to Respondent’s websites which feature links to other websites, including those offering pet care supplies distributed by competitors of Complainant . The Panel finds that Respondent’s use of confusingly similar disputed domain names to operate a website which features links to products in direct competition with Complainant’s business is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain names redirect Internet users to a website which features links to other websites, some of which sell products in direct competition with Complainant’s pet care supply business. Complainant alleges that Respondent’s use of the disputed domain names disrupt its business because Internet users intending to purchase products from Complainant may purchase the same product from a competitor through Respondent’s website as a result. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s pet care supply business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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)).
The Panel infers that Respondent receives click-through fees from the previously mentioned links. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website, and featured links. Respondent attempts to profit off this confusion through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds the elements of Policy ¶ 4(a)(ii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drsfostersmithe.com> and <drsfostermith.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 23, 2010
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