Sun-Maid Growers of California v. Karen
Mackoy
Claim Number: FA0211000135013
PARTIES
Complainant
is Sun-Maid Growers of California,
Kingsburg, CA (“Complainant”) represented by John C. Baum, of Townsend
and Townsend and Crew LLP.
Respondent is Karen Mackoy,
Palm Harbor, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <sun-maid.us>,
registered with Nitin Networks d/b/a ABR Products.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 26, 2002; the Forum received a hard copy of the
Complaint on November 26, 2002.
On
December 2, 2002, Nitin Networks d/b/a ABR Products confirmed by e-mail to the
Forum that the domain name <sun-maid.us>
is registered with Nitin Networks d/b/a ABR Products and that Respondent is the
current registrant of the name. Nitin
Networks d/b/a ABR Products has verified that Respondent is bound by the Nitin
Networks d/b/a ABR Products registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
December 5, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 26, 2002 by which Respondent could file a formal Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no formal Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 3, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any formal
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant asserts the following:
1. Respondent’s <sun-maid.us>
domain name is identical to Complainant’s registered SUN-MAID mark.
2. Respondent does not have any rights or
legitimate interests in the <sun-maid.us> domain name.
3. Respondent registered and is using the <sun-maid.us>
domain name in bad faith.
B. Respondent did not submit a formal
Response in this proceeding.
FINDINGS
Complainant, Sun-Maid Growers of
California, represents one of the best-known producers and sellers of raisins
and other dried fruits in the world. Complainant has operated in the dried
fruits industry for nearly a century.
Complainant’s rights in the SUN-MAID mark
are represented by numerous trademark registrations and applications held with
the U.S. Patent and Trademark Office (“USPTO”) and other authorized
international trademark authorities. More specifically, Complainant holds the
following trademark registrations protecting its interests in the SUN-MAID
mark: U.S. Reg. No. 178,119 listed on the Principal Register of the USPTO on
Jan. 8, 1924; U.S. Reg. No. 252,224; U.S. Reg. No. 1,270,886; Australian Reg.
Nos. A317165 and A317166; the Benelux Countries Reg. No. 78,511; Swiss Reg. No.
292,673; and, United Kingdom Reg. Nos. 948,717 and 464,501, among others.
Millions of Complainant’s packages
bearing the SUN-MAID mark have been sold as Complainant actively promotes its
brand and corresponding mark throughout the United States and abroad.
Complainant exports products to more than fifty countries around the world.
Additionally, Complainant actively advertises its products under the SUN-MAID
mark over the Internet medium and operates from the <sun-maid.com> domain
name.
Respondent registered the <sun-maid.us>
domain name on May 21, 2002. The aforementioned domain name currently links
to a website offering the domain name for sale and provides contact information
for Domains.US Inc.
Complainant’s investigation into
Respondent’s activities indicates that Respondent has repeatedly attempted to
sell the subject domain name registration to Complainant for $25,000 and
$15,000. Further, Respondent is engaged in the business of registering
established marks in domain names with the intent to eventually market and sell
its rights in those domain names to interested buyers. Complainant’s evidence
indicates that Respondent operates under the Domains.US Inc. moniker and
business identity. Respondent’s informal submission supports this contention as
Respondent’s identity in its e-mail to the Forum is represented as “Domains.US
Inc.”
Additionally, Respondent’s informal
submission to the Forum indicates that Respondent is interested in transferring
the domain name registration to Complainant, as the pertinent section of
Respondent’s submission states:
In reference to case number
FA0211000135013, we have decided to turn over the ownership of the web
immediately to Sun-Maid as per your instructions. Please let us know how we
should go about doing this.
DISCUSSION
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 the 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.
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant has established rights in the
SUN-MAID mark through registration with various international trademark
authorities and subsequent continuous use of the mark in commerce.
Respondent’s <sun-maid.us> domain
name is identical to Complainant’s SUN-MAID mark. Respondent’s second-level
domain does not deviate from Complainant’s mark in any respect. Further, the
addition of a country-code as the top-level domain has been determined by
previous panels to be inconsequential when conducting an analysis under Policy
¶ 4(a)(i); thus, Respondent’s domain name is identical to Complainant’s mark. See
World
Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top
level domain (ccTLD) designation <.tv> does not serve to distinguish [the
disputed domain] names from Complainant’s marks since ‘.tv’ is a common
Internet address identifier that is not specifically associated with
Respondent”); see also Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding the addition of the country-code “.us”
fails to add any distinguishing characteristic to the domain name, therefore
the <tropar.us> domain name is identical to Complainant’s TROPAR mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a formal
Response in this proceeding. Therefore, Complainant’s submission has gone
unopposed and the arguments unrefuted. In the absence of a Response, the Panel
is permitted to accept as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Further, because
Respondent has failed to submit a Response, Respondent has failed to propose
any set of circumstances that could substantiate its rights or legitimate
interests in the <sun-maid.us> domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Significantly, Respondent has indicated
via an informal Response that it desires to “turn over the ownership of the web
immediately to Sun-Maid [Complainant].” Although Complainant is pursuing
transfer of the domain name registration under the authority of the usTLD
Policy, Respondent’s apparent willingness to transfer its rights in the domain
name indicates that it lacks rights and legitimate interests in <sun-maid.us>.
See Marcor Int’l v. Langevin,
FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer
the domain name at issue indicates that it has no rights or legitimate
interests in the domain name in question); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb.
Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at
issue to Complainant, as reflected in its Response, is evidence that it has no
rights or legitimate interests in the domain name).
No evidence has been produced that would
suggest Respondent has a legitimate connection with the <sun-maid.us> domain
name, or that Respondent has established secondary meaning under the SUN-MAID
identifier. Respondent has also failed to proffer any evidence that would
contradict such a conclusion. Such circumstances fail to support a finding that
Respondent is the owner or beneficiary of a trademark or service mark that is
identical to the <sun-maid.us> domain name; thus, Respondent fails
to establish rights in the domain name under Policy ¶ 4(c)(i). See CDW
Computer Centers, Inc. v. The Joy Comp. FA 114463 (Nat. Arb. Forum July 25,
2002) (finding that, because Respondent did not come forward with a Response,
the Panel could infer that Respondent had no trademark or service marks
identical to <cdw.us> and therefore had no rights or legitimate interests
in the domain name).
Respondent is represented by the name
Karen Mackoy under the domain name registration’s WHOIS information and
apparently operates under the identification of Domains.US Inc. Additionally,
the subject domain name resolves to a webpage that indicates the domain name
registration is for sale, and does not display any content that would give rise
to an inference that Respondent is commonly know by the domain name. Therefore,
Respondent fails to demonstrate rights or legitimate interests in the domain
name under Policy ¶ 4(c)(iii). See Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding
no rights or legitimate interests because Respondent is not commonly known by
the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Complainant has provided the Panel with
uncontested circumstances that indicate that Respondent operates under the
identification of Domains.US Inc. and is involved in the business of collecting
potentially infringing domain names and marketing them to interested buyers.
Respondent attempted to sell the domain name registration to Complainant for an
amount far in excess of the registration costs associated with the <sun-maid.us>
domain name. Respondent’s attempt to register an infringing domain name
with the intention to profit from such opportunistic affiliation with a famous
mark by selling its rights in the domain name fails to establish rights or
legitimate interests in the domain name under Policy ¶¶ 4(c)(ii) or (iv).
Additionally, Respondent has not submitted any evidence that would indicate
that it has demonstrable preparations to use the domain name in connection with
a bona fide offering of goods or services in the future. See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
As stated,
Respondent indicated in an informal Response that it was willing to transfer
its rights in the domain name to Complainant. However, Respondent’s amicable
representation follows its attempts to market the domain name registration to
Complainant in excess of its registration costs. Such behavior fulfills the bad
faith registration or use requirements posed by Policy ¶ 4(a)(iii). See
Global Media Group, Ltd. v. Kruzicevic,
FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to
address Complainant’s allegations coupled with its willingness to transfer the
names is evidence of bad faith registration and use); see also Marcor Int’l v. Langevin, FA 96317 (Nat.
Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name
at issue coupled with its expressed willingness to transfer the name amply
satisfies the bad faith requirements set forth in ICANN Policy).
Additionally, Respondent’s attempts to
sell the domain name registration implicates Policy ¶ 4(b)(i) and evidences bad
faith registration and use. More specifically, circumstances indicate that
Respondent registered the domain name primarily for the purpose of selling,
renting or otherwise transferring the domain name registration to Complainant
for valuable consideration. See World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name registration for valuable
consideration in excess of any out of pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent
stated in communication with Complainant, “if you are interested in buying this
domain name, we would be ready to sell it for $10,000”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that the requested relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the domain name <sun-maid.us>
be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 6, 2003
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