Blue Sky Alpacas, Inc. v. Linda Russo doing business as Blue Sky Alpacas
Claim Number: FA1012001362922
Complainant is Blue Sky Alpacas, Inc. (“Complainant”), represented by Steven E. Antolak of Antolak Law Office, Minnesota, USA. Respondent is Linda Russo doing business as Blue Sky Alpacas (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blueskyalpacas.biz>, registered with eNom, 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.
David H. Bernstein as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2010; the National Arbitration Forum received payment on December 10, 2010.
On December 14, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <blueskyalpacas.biz> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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”).
The Forum thereafter identified several deficiencies in the Complaint, and on December 17, 2010, Complainant filed an Amended Complaint which was determined by the Forum to be complete and in compliance with the Rules for Uniform Dispute Resolution Policy (the “Rules”).
On December 17, 2010, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2011 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@blueskyalpacas.biz. Also on December 17, 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.
On December 27, 2010, Respondent submitted an email stating, in pertinent part: “I am responding to the attached complaint, case # FA1012001362922, filed against me on 12/17/2010. I have decided to give up my domain name and have it transferred to the Complainant. I have taken down my website and will probably be going out of business in the very near future”. Respondent did not otherwise submit a Response.
On January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David H. Bernstein as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
FACTUAL BACKGROUND
Complainant is a Minnesota corporation. For more than a decade, Complainant has raised alpacas and sold yarn, hand cream, and knitting patterns under the “Blue Sky Alpacas” trade name. Complainant has registered the trademark BLUE SKY ALPACAS with the United States Patent and Trademark Office in 2007, with use in commerce dating back to 1999 for yarn and knitting patterns, and back to 2002 for hand cream. Complainant states that it has done business under the name “Blue Sky Alpacas, Inc.” since 1996. Since 1999, Complainant has owned and operated a corporate website located at <www.blueskyalpacas.com>.
Respondent is the owner of Blue Sky Alpacas, a Maine-based company whose primary business is raising, breeding and selling alpacas, but which has also sold some alpaca yarn and knitwear products. Respondent concedes in a letter sent to Complainant’s counsel that it was aware of Complainant’s trademark by at least 2006, which was prior to the time (in 2007) when it began to sell yarn and knitwear products under the BLUE SKY ALPACAS trademark and was prior to its registration of the disputed domain name <blueskyalpacas.biz> in February 2008.
A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to the BLUE SKY ALPACAS trademark. Complainant cites Respondent’s use of the domain name in connection with the trade of live alpacas and alpaca products, in competition with Complainant, as evidence of Respondent’s efforts to intentionally attract consumers to Respondent’s webpage by creating a likelihood of confusion. Complainant asserts that Respondent’s use of the disputed domain name suggests an affiliation with, or sponsorship of Respondent’s products by Complainant, where no such relationship exists. In addition, Complainant cites Respondent’s use of the email address “linda@blueskyalpacas.biz”, as compared to Complainant’s email address “linda@blueskyalpacas.com”, as further evidence of confusing similarity.
Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant cites Respondent’s failure to register the name “Blue Sky Alpacas” as an assumed name, to register any use of the trademark BLUE SKY ALPACAS, or to incorporate or otherwise organize Respondent’s business under the name “Blue Sky Alpacas”. Complainant alleges that Respondent must have had knowledge of the BLUE SKY ALPACAS trademark and Complainant’s domain name at the time Respondent registered the disputed domain name, and cites a letter from Respondent stating that Respondent was aware of the BLUE SKY ALPACAS trademark and the likelihood of confusion between Complainant’s and Respondent’s domain names, but chose to proceed with registration of the disputed domain name despite the potential for confusion. Complainant further alleges that Respondent has no legitimate non-commercial or fair use of the disputed domain name.
Complainant alleges that Respondent’s registration and use of the disputed domain name was in bad faith. Complainant cites the aforementioned letter from Respondent, stating that Respondent was aware of the BLUE SKY ALPACAS trademark and the likelihood of confusion between Complainant’s and Respondent’s domain names, but chose to proceed with registration of the disputed domain name despite the potential for confusion. Complainant alleges as further evidence of bad faith that Respondent’s only purpose for the disputed domain name is for commercial gain, without regard to potential confusion with Complainant’s domain name.
B. Respondent
As noted above, in its email, Respondent makes no assertions with respect to Complainant’s allegations, and consents to the transfer of the disputed domain name. Respondent additionally states that Respondent’s website has been taken down.
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."
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.
Even if a Respondent defaults, the Complainant must still prove all three factors by a preponderance of the evidence in order to obtain from the Panel a decision ordering transfer of the disputed domain name. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000). Furthermore, even if Respondent consents to transfer, the Panel may still review the evidence to determine whether transfer is appropriate and may issue a decision on the merits. See, e.g., RE/MAX, LLC v. Pat Newton Properties c/o Patrick Newton, Claim Number: FA1005001325776 (July 9, 2010).
In its emailed response, Respondent has not disputed or rebutted any of the factual assertions that are made and supported by evidence submitted by Complainant. Furthermore, Respondent has not submitted a certified Response as required by the Rules. As such, the Panel will accept as true all of the factual assertions in the Complaint.
In accordance with Paragraph 5(e) of the Rules, the Panel will decide the dispute based upon the Complaint.
Complainant has registered the BLUE SKY ALPACAS trademark with the United States Patent and Trademark Office. This registration provides prima facie proof of Complainant’s rights to the BLUE SKY ALPACAS trademark.
The <blueskyalpacas.biz> domain name consists entirely of Complainant’s mark along with a gTLD (here, .biz). When assessing the similarity between the disputed domain name and the trademark at issue, the Panel may disregard the gTLD. For purposes of the Policy, the domain name is thus identical to the BLUE SKY ALPACAS trademark.
The Panel thus concludes that Complainant has sustained its burden of showing that the disputed domain name is identical or confusingly similar to Complainant’s trademark.
Paragraph 4(c) of the Policy instructs the Panel to find that Respondent has rights or legitimate interests in the disputed domain name if any of the following conditions are satisfied:
(i) Before any notice to Respondent of the dispute, Respondent used, or demonstrated preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has alleged sufficient evidence to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
First, although there is very limited evidence available to the Panel, the evidence that is of record does not support a showing by Respondent that it uses the disputed domain name in connection with a bona fide offering of goods or services. According to Respondent’s letter, Respondent started its alpaca farm under the trademark BLUE SKY ALPACAS in 2004, and started selling alpaca yarn and knitwear in 2007, all long after Complainant’s first use of the BLUE SKY ALPACAS mark. To the extent Respondent’s use of that name was infringing, it cannot form the basis for a “bona fide” offering of goods or services. See, e.g., Schouten Indus. B.V. v. Canadian Soylife Health Co., Ltd., FA 149188 (Nat. Arb. Forum July 19, 2003).
Second, Respondent is not affiliated with Complainant, and to the extent it may have been known as Blue Sky Alpacas, as noted above, any such use appears to have been infringing, at least in 2007 when Respondent sold alpaca yarn and knitwear in competition with Complainant. As Respondent itself stated, at the time it sold its yarn and knitwear, it already was “aware of [Complainant’s] notoriety as a national provider of alpaca yarn.”.
Third, Respondent has not made a legitimate noncommercial or fair use of the domain name. To the contrary, it used the Blue Sky Alpacas name and website as part of its commercial enterprise.
Accordingly, on the strength of the evidence submitted by Complainant, and because Respondent has not rebutted or contested Complainant’s prima facie showing, Complainant has shown that Respondent lacks rights and legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy instructs the Panel to find that Respondent’s registration and use of the disputed domain name was in bad faith if:
(i) circumstances indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant; or
(ii) Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct; or
(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Complainant alleges that Respondent’s registration and use of the disputed domain name was in bad faith. Complainant cites a letter from Respondent, stating that Respondent was aware of the BLUE SKY ALPACAS trademark but chose to proceed with registration of the disputed domain name. Complainant alleges as further evidence of bad faith that Respondent’s only purpose for the registration of the disputed domain name was for commercial gain, without regard to potential confusion with Complainant’s domain name.
On the record of this case, the Panel cannot state that Respondent registered the disputed domain name with the specific bad faith intent to take advantage of Complainant’s trademark rights and cause confusion. Rather, although the evidence is thin, it appears from Respondent’s letter that it was a small, unsophisticated alpaca farm in Maine, that it adopted the trademark without knowledge of Complainant or its trademark, and that it sold excess alpaca fleece as yarn and sold some knitted products in 2007, probably without giving much thought to Complainant or its trademark rights. However, Respondent also conceded that it became aware of the national reputation of Complainant in 2006, prior to its sale of yarn and knitwear and prior to its registration of the domain name. At the minimum, Respondent’s registration of the domain name in 2008, after it was aware of Complainant’s trademark rights, was reckless, and was done without appropriate regard for Complainant’s trademark. As such, the Panel finds that Respondent did register and use the domain name in bad faith as that term is understood in the context of the Policy.
Accordingly, the Panel concludes that Complainant has sustained its burden of showing that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blueskyalpacas.biz> domain name be TRANSFERRED from Respondent to Complainant.
David
H. Bernstein, Panelist
Dated: January 18, 2011
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