Rita and Vernon Habighorst, Blue Ribbon Custom Tack, Inc. v. Blue Ribbon Tack
Claim Number: FA1104001381501
Complainant is Rita and Vernon Habighorst, Blue Ribbon Custom Tack, Inc. (“Complainant”), represented by Adam Stephenson of Adam R. Stephenson, Ltd., Arizona, USA. Respondent is Blue Ribbon Tack (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blueribbontackca.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2011; the National Arbitration Forum received payment on April 1, 2011.
On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <blueribbontackca.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@blueribbontackca.com. Also on April 7, 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 April 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <blueribbontackca.com> domain name is confusingly similar to Complainant’s BLUE RIBBON TACK mark.
2. Respondent does not have any rights or legitimate interests in the <blueribbontackca.com> domain name.
3. Respondent registered and used the <blueribbontackca.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rita and Vernon Habighorst, Blue Ribbon Custom Tack, Inc., custom manufactures western saddles and tack. Complainant owns the BLUE RIBBON TACK mark and has used the mark since 1989 in conjunction with its custom work. Complainant holds a trademark registration for its BLUE RIBBON TACK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,437,748 issued March 27, 2001). Complainant registered the <blueribbontack.com> domain name in 2000.
Respondent, Blue Ribbon Tack, registered the <blueribbontackca.com> domain name on January 20, 2009. Respondent’s disputed domain name resolves to Respondent’s own website, which displays the BLUE RIBBON TACK mark and sells saddles and tack products in direct competition with Complainant’s 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 maintains that it has established rights in the BLUE RIBBON TACK mark. Previous panels have determined that a complainant can establish rights in a mark by registering with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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.”). Here, Complainant holds a trademark registration for its BLUE RIBBON TACK mark with the USPTO (Reg. No. 2,437,748 issued March 27, 2001). The Panel finds that Complainant has demonstrated its rights in the BLUE RIBBON TACK mark through its registration with a trademark authority under Policy ¶ 4(a)(i).
Complainant contends that its BLUE RIBBON TACK mark is confusingly similar to Respondent’s <blueribbontackca.com> domain name. The disputed domain name incorporates the entire mark and only changes it by deleting the spaces between the words of the mark, adding the geographical abbreviation “ca” for “California,” and adding the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the deletion of a space between words of a mark does not adequately distinguish the disputed domain name 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 use of a geographical term or abbreviation does not remove the disputed domain name from the realm of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Also, the Panel finds that the affixation of a gTLD does not properly distinguish the disputed domain name from 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.”). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BLUE RIBBON TACK mark according to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <blueribbontackca.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated “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.” Here, Complainant has presented a prima facie case. Respondent failed to submit a response to the Complaint, which the Panel may interpret as evidence that Respondent has no rights or 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 opts to look at the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <blueribbontackca.com> domain name. The WHOIS information lists Respondent as “Blue Ribbon Tack,” which appears to be similar to the disputed domain name. However, Complainant asserts that it has never given Respondent the permission or right to use the mark within the disputed domain name. The Panel finds that, despite the WHOIS information which seems to indicate a relationship between Respondent and the disputed domain name, Respondent is not commonly known by the <blueribbontackca.com> domain name under Policy ¶ 4(c)(ii) where there is no other affirmative evidence presented that it is commonly known by the disputed domain. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent uses the disputed domain name to operate its own website which displays Complainant’s BLUE RIBBON TACK mark in numerous places and sells saddle and tack goods that directly compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to operate its own commercial website in competition with Complainant’s business is not 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant claims that Respondent’s use of the <blueribbontackca.com> domain name disrupts its business of providing competing custom made saddle and tack goods. Internet users intending to purchase Complainant’s goods may find Respondent’s website and, because of the confusingly similar disputed domain name and use of Complainant’s mark on the website, may be mislead into purchasing similar goods from Respondent instead. The Panel finds that Respondent’s registration and use of the disputed domain name to redirect Internet users and potential customers of Complainant to Respondent’s own website is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent’s <blueribbontackca.com> domain name resolves to Respondent’s own commercial website which prominently displays Complainant’s BLUE RIBBON TACK mark and sells saddle and tack products in direct competition with Complainant. The resolving website creates a substantial likelihood of confusion as Internet users will be mislead as to Complainant’s sponsorship of, or affiliation with, the resolving website and products sold. Respondent attempts to profit from this confusion through the promotion of its own website and sale of goods. The Panel finds that such use constitutes bad faith under Policy ¶ 4(b)(iv). See 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); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has 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 <blueribbontackca.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 11, 2011
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