Bear Creek Country Kitchens, LLC v. Domain Tech Enterprises / Domain Administrator / Jose Alcalde Delano #10682
Claim Number: FA1105001387474
Complainant is Bear Creek Country Kitchens, LLC (“Complainant”), represented by Sheri S. Mason of Morse, Barnes-Brown & Pendleton, P.C., Massachusetts, USA. Respondent is Domain Tech Enterprises / Domain Administrator / Jose Alcalde Delano #10682 (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bearcreekcountrykitchens.com>, registered with Power Brand Center Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 11, 2011.
On May 6, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <bearcreekcountrykitchens.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 May 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@bearcreekcountrykitchens.com. Also on May 16, 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 June 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <bearcreekcountrykitchens.com> domain name is confusingly similar to Complainant’s BEAR CREEK COUNTRY KITCHENS mark.
2. Respondent does not have any rights or legitimate interests in the <bearcreekcountrykitchens.com> domain name.
3. Respondent registered and used the <bearcreekcountrykitchens.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bear Creek Country Kitchens, LLC, is a provider of soup and soup dishes. Complainant owns a trademark registration for the BEAR CREEK COUNTRY KITCHENS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,575,719 filed July 7, 2008 and issued February 17, 2009). Complainant also has common law rights in the BEAR CREEK COUNTRY KITCHENS mark dating back to 1992.
Respondent, Domain Tech Enterprises / Domain Administrator / Jose Alcalde Delano #10682, registered the <bearcreekcountrykitchens.com> domain name on March 26, 2005. The disputed domain name resolves to a directory website that features both competing and unrelated third-party links.
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 owns a trademark registration for the BEAR CREEK COUNTRY KITCHENS mark with the USPTO (Reg. No. 3,575,719 filed July 7, 2008 and issued February 17, 2009). The Panel finds that this trademark registration establishes Complainant’s rights in the BEAR CREEK COUNTRY KITCHENS marke pursuant to Policy ¶ 4(a)(i), even though Respondent does not live or operate in the U.S. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). The Panel also finds that Complainant’s rights in the BEAR CREEK COUNTRY KITCHENS mark date back to the filing date of July 7, 2008. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also alleges common law rights in the BEAR CREEK COUNTRY KITCHENS mark dating back to 1992 based on its continuous use of the mark and its subsequent acquisition of secondary meaning. Complainant asserts that it previously owned a USPTO trademark registration for the BEAR CREEK COUNTRY KITCHENS mark from August 2000 until it lapsed in August 2007 (Reg. No. 2,378,327 issued August 22, 2000). This trademark registration included a first use in commerce date of November 1, 1991. The currently active trademark registration owned by Complainant (Reg. No. 3,575,719 issued February 17, 2009) includes a first use in commerce date of March 1, 1992. Complainant argues that, since at least 1992, it has engaged in continuous use of the BEAR CREEK COUNTRY KITCHENS mark, substantially investing in the advertising, marketing and promotion of its BEAR CREEK COUNTRY KITCHENS mark. Complainant contends that the mark has been advertised on the Specialty Brands website since 2005. Based on this evidence provided by Complainant, the Panel finds that Complainant has shown continuous use and the subsequent acquisition of secondary meaning in the BEAR CREEK COUNTRY KITCHENS mark to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant contends that Respondent’s <bearcreekcountrykitchens.com> domain name is identical to Complainant’s BEAR CREEK COUNTRY KITCHENS because the only differences between the two is the elimination of the spaces between terms and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither eliminating spaces nor attaching a gTLD has any effect on differentiating the disputed domain name from Complainant’s mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel thus determines that Respondent’s <bearcreekcountrykitchens.com> domain name is identical to Complainant’s BEAR CREEK COUNTRY KITCHENS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging Respondent’s lack of rights and legitimate interests, Policy ¶ 4(a)(ii) requires Complainant to put forth a sufficient prima facie case against Respondent before the burden to show rights and legitimate interests shifts to Respondent. The Panel finds that Complainant has satisfied its obligation in the instant proceeding, but Respondent, in its default, has failed to meet its subsequent burden. The Panel concludes that Complainant’s allegations may be accepted as true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). The Panel will nevertheless consider the complete record to determine independently whether Respondent possesses rights and legitimate interests.
Complainant asserts that there is no evidence showing that Respondent is commonly known by the <bearcreekcountrykitchens.com> domain name. The WHOIS information for the disputed domain name does not reflect any association between Respondent and the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant argues that the <bearcreekcountrykitchens.com> domain name resolves to a directory site featuring both competing and unrelated third-party links. The Panel finds that maintaining a directory of pay-per-click links at the disputed domain name that misappropriates Complainant’s mark is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <bearcreekcountrykitchens.com> domain name to advertise links to related products disrupts Complainant’s business by promoting Complainant’s competitors under Complainant’s mark. The Panel finds that this behavior shows Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant contends that Respondent registered Complainant’s identical mark as the disputed domain name in order to attract Internet consumers and create a likelihood of confusion with Complainant’s mark. As Respondent’s resolving website displays presumed pay-per-click links, Respondent likely profits by the Internet traffic diverted to its site as a result of its misappropriation of Complainant’s mark. The Panel finds these efforts to attract, mislead and profit demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bearcreekcountrykitchens.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 19, 2011
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