SF Investments, Inc. v. Jason Black / ACSCredco
Claim Number: FA1101001368326
Complainant is SF Investments, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Jason Black / ACSCredco (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithfieldfoods.mobi>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 18, 2011; the National Arbitration Forum received payment January 19, 2011.
On January19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <smithfieldfoods.mobi> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@smithfieldfoods.mobi. Also on February 1, 2011, 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 February 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <smithfieldfoods.mobi> domain name is confusingly similar to Complainant’s SMITHFIELD mark.
2. Respondent has no rights to or legitimate interests in the <smithfieldfoods.mobi> domain name.
3. Respondent registered and used the <smithfieldfoods.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SF Investments, Inc., was established in 1936 and is a major food manufacturer and distributor in the United States. Complainant owns the SMITHFIELD mark and uses its mark for the sale and promotion of its various food products. Complainant holds a trademark registration for its SMITHFIELD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,624,764 issued September 24, 2002).
Respondent, Jason Black / ACSCredco, registered the <smithfieldfoods.mobi> domain name May 21, 2010. The disputed domain name resolves to an undeveloped website with no active content.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 that it has demonstrated rights in its SMITHFIELD mark. A Complainant establishes rights in a mark through federal trademark registration. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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). Complainant holds a trademark registration for its SMITHFIELD mark with the USPTO (e.g., Reg. No. 2,624,764 issued September 24, 2002). Therefore, the Panel finds that Complainant established rights in the SMITHFIELD mark under Policy ¶ 4(a)(i) through its federal trademark registration.
Complainant argues that Respondent’s <smithfieldfoods.mobi> domain name is confusingly similar to its SMITHFIELD mark. The disputed domain name uses Complainant’s mark entirely and the disputed domain differs only by the addition of the descriptive word “foods,” and the addition of the generic top-level domain (“gTLD”) “.mobi.” The Panel finds that addition of a descriptive word, such as “foods,” which is clearly related to Complaint’s business in the food industry, is not enough to avoid a finding of confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel also finds that affixing the gTLD to the mark fails to properly distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Respondent’s <smithfieldfoods.mobi> domain name is confusingly similar to Complainant’s SMITHFIELD mark under Policy ¶ 4(a)(i). Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant maintains that Respondent has no rights to or legitimate interests in the <smithfieldfoods.mobi> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant made a prima facie showing to support its claims against Respondent. Respondent failed to submit a response to the Complaint, and in such circumstances, the Panel may find that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel still examines the record to determine whether evidence there suggests that Respondent has such rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <smithfieldfoods.mobi> domain name. The WHOIS information in the record lists Respondent as “Jason Black / ACSCredo,” which is not nominally similar to the disputed domain name. Complainant maintains that Respondent is not a licensee of Complainant, and that Complainant has not given Respondent any permission or consent to use Complainant’s SMITHFIELD mark in a domain name or otherwise. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
The disputed domain name resolves to an undeveloped website. Respondent is making no actual use of the disputed domain name or resolving website. The Panel finds that such inactive holding is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Complainant further alleges that Respondent has offered to sell the <smithfieldfoods.mobi> domain name to Complainant. Respondent solicited Complainant via mail and offered to sell the disputed domain name for $3,000, an amount far exceeding out-of-pocket expenses Respondent may have incurred. Complainant responded, informed Respondent of its rights, and Respondent agreed to the transfer of the domain name, but later took back its offer and tried to sell the domain name for $500. The Panel finds that Respondent’s attempt to solicit Complainant and sell the disputed domain name also is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent tried to sell the <smithfieldfoods.mobi> domain name to Complainant for an amount in excess of expected costs of registration. Respondent solicited Complainant and made two offers, both exceeding out-of-pockets expenses actually incurred. The Panel finds that Respondent’s demonstrated interest in selling the disputed domain name is evidence of Respondent’s bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent uses the disputed domain name to host an inactive website. Respondent does not use the resolving site in connection with any legitimate business and has made no demonstrable preparations to use or develop the website. It is likely that Respondent registered the <smithfieldfoods.mobi> domain name for no other reason than to sell it at a later date. The Panel finds that such passive holding of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <smithfieldfoods.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 8, 2011.
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