Foster and Smith, Inc. v. Janice Liburd / Porchester Partners, Inc.
Claim Number: FA1106001393522
Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Janice Liburd / Porchester Partners, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fostersandsmithaquatics.com>, registered with MONIKER ONLINE SERVICES, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2011; the National Arbitration Forum received payment on June 15, 2011.
On June 15, 2011, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <fostersandsmithaquatics.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@fostersandsmithaquatics.com. Also on June 17, 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 July 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the DOCTORS FOSTER AND SMITH service mark, which it uses in connection with the marketing of its pet supplies and medications, including those for fish and other aquatic animals.
Complainant has registrations for its DOCTORS FOSTER AND SMITH service mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,524,313, issued January 1, 2002).
Respondent registered the <fostersandsmithaquatics.com> domain name on March 25, 2010.
The disputed domain name resolves to a webpage which features links to websites offering products similar to and in competition with those sold by Complainant, including pet and pond supplies and pet medications.
Respondent’s <fostersandsmithaquatics.com> domain name is confusingly similar to Complainant’s DOCTORS FOSTER AND SMITH mark.
Respondent is not commonly known by the disputed domain name.
There is no relationship between the parties giving rise to any license, permission or other right by which Respondent could use a domain name incorporating Complainant’s DOCTORS FOSTER AND SMITH mark.
Respondent does not have any rights to or legitimate interests in the domain name <fostersandsmithaquatics.com>.
Respondent registered and uses the <fostersandsmithaquatics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DOCTORS FOSTER AND SMITH service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant’s rights in its service mark are sufficient under the Policy without regard to whether those rights arise by reason of registration in a jurisdiction other than that in which Respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish such rights in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
The disputed domain name is confusingly similar to Complainant’s <fostersandsmithaquatics.com> mark. The addition of a generic top-level domain (“gTLD”), such as “.com,” and the elimination of spaces between the terms of a mark make no difference in a Policy ¶ 4(a)(i) analysis. See, for example, 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”); see also 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 the terms of a complainant’s mark and the addition of a gTLD to it do not establish distinctiveness from the mark under Policy ¶ 4(a)(i).
Similarly, the deletion of one of the terms of a mark (here the term “doctors”) may be insufficient to distinguish the resulting domain name from the mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the domain name <americaneaglestores.com> to be confusingly similar to a complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> was confusingly similar to a complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Finally, the addition to a mark of a descriptive term in forming a domain name does not differentiate the domain from a mark sufficiently to avoid a finding of confusing similarity. This is especially true where, as here, the added term (“aquatics”) is descriptive of Complainant’s business. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding that a respondent’s <amextravel.com> domain name was confusingly similar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004):
In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s … marks. Each disputed domain name contains the … marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.
The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant has made out a prima facie case in support of its claim in this regard, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden under this head of the Policy, “the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”
Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Therefore the burden has shifted to Respondent, and Respondent’s failure to submit a response to the Complaint permits us to presume that Respondent lacks rights to and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
Nonetheless, we will examine the evidence before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin this examination by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that there is no relationship between the parties giving rise to any license, permission or other right by which Respondent could use a domain name incorporating Complainant’s DOCTORS FOSTER AND SMITH mark. Moreover, the WHOIS information for the contested domain name identifies the registrant only as “Janice Liburd / Porchester Partners, Inc.,” which does not resemble the domain name. On this record we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); to the same effect, see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003).
We next note that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to a webpage which features links to websites offering the products of Complainant’s commercial competitors. This use of the domain name is evidence that Respondent lacks rights to and legitimate interests in the disputed domain under Policy ¶ 4(c)(i) and under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to operate a portal website with hyperlinks to various third-party websites, some in direct competition with the business of a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Where a respondent uses a disputed domain name to display links to the websites of a complainant’s competitors, thus disrupting that complainant’s business, the registration and use of the domain name is properly found to be in bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which is confusingly similar to a complainant’s mark in order to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004):
Respondent is referring Internet traffic that seeks out the … domain name to a competitor’s … site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
In addition, Respondent’s use of the contested domain name as alleged in the Complaint disrupts Complainant’s business within the contemplation of Policy ¶ 4(b)(iii). In the circumstances here presented, we may comfortably presume that Respondent profits from this disruption, whether from the receipt of click-through fees or otherwise. Where a respondent profits from the use of another’s mark in a domain name, it may be concluded that that respondent has registered and used the domain name in bad faith. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Therefore, the Panel finds that the registration and use of the disputed domain as alleged in the Complaint comes within the parameters of bad faith registration and use described in Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <fostersandsmithaquatics.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 25, 2011
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