DogFish Head Marketing, LLC v. Emile Jean-Baptiste
Claim Number: FA1107001397405
Complainant is DogFish Head Marketing, LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington D.C., USA. Respondent is Emile Jean-Baptiste (“Respondent”), Haiti.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogfishheadbrewery.com>, registered with Fabulous.com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 7, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <dogfishheadbrewery.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@dogfishheadbrewery.com. Also on July 11, 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 August 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <dogfishheadbrewery.com> domain name is confusingly similar to Complainant’s DOGFISH HEAD TA-KEELA mark.
2. Respondent does not have any rights or legitimate interests in the <dogfishheadbrewery.com> domain name.
3. Respondent registered and used the <dogfishheadbrewery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DogFish Head Marketing, LLC, is a large global provider of beer and spirits as well as restaurant services. Complainant owns multiple registrations for the DOGFISH HEAD family of marks, including a registration for the DOGFISH HEAD TA-KEELA mark, with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,033,849 filed October 22, 2004; registered December 27, 2005). Complainant uses the family of marks to promote and sell its Dogfish Head brand products.
Respondent, Emile Jean-Baptiste, registered the disputed domain name on October 9, 2005. The disputed domain name resolves to a parked site offering links to third-parties, many of which are Complainant competitors.
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 claims that it has established its rights in the DOGFISH HEAD TA-KEELA mark by registering that mark with the USPTO. To support its claim, Complainant has submitted multiple trademark certificates indicating that Complainant owns the DOGFISH HEAD TA-KEELA mark, inter alia, and that it is duly registered. The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i) by registering it with the USPTO (Reg. No. 3,033,849 filed October 22, 2004; registered December 27, 2005). The Panel also finds that the rights date back to the filing date due to Complainant’s successful registration of said mark. See 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).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also claims that Respondent’s disputed domain name is confusingly similar to its own DOGFISH HEAD TA-KEELA mark. The disputed domain name includes the distinctive portion of the mark, “dogfishhead,” while removing the term “ta-keela.” The disputed domain name also includes the term “brewery,” which is descriptive of Complainant’s business endeavors, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its initial prima facie burden under Policy ¶ 4(a)(ii), shifting the onus to Respondent to prove that it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain due to its failure to file a Response in this matter; however, the Panel will still examine the record in its entirety before making such a determination in accordance with the factors listed in Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information also does not indicate that Respondent is commonly known by the disputed domain name, identifying the registrant as “Emile Jean-Baptiste.” The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a parked site offering links to third-parties, many of which are Complainant’s competitors in the brewing and spirits industry. The Panel finds that using the disputed domain name to offer links to Complainant’s competitors does not rise to the level of a bona fide offering of goods or services under Policy ¶ 4(c)(i) and certainly does not qualify as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent’s disputed domain name disrupts its business. Internet users seeking out Complainant may use Respondent’s disputed domain name and arrive at its parked site where links to Complainant’s competitors are offered. They then may click on one of the links and purchase goods or services from a competitor rather than Complainant. The Panel finds that this use disrupts Complainant’s business providing affirmative evidence of bad faith registration and use by Respondent under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Complainant also contends that Respondent is gaining commercially from the operation of the disputed domain name constituting bad faith registration and use. Respondent’s disputed domain name resolves to a parked site where links to third parties are offered, many of which are Complainant’s competitors. The Panel finds that even if Respondent is not collecting the revenue from the click-through fees it is allowing the confusingly similar site to be exploited for capital gain. Internet users will still be mislead to Respondent’s site and become confused as to its affiliation with Complainant given the fact that it offers links to analogous services offered by Complainant’s competitors. Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked.’ …for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees… the key fact here is that respondent, in collaboration with the domain parking service is exploiting complainant’s good will.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dogfishheadbrewery.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 15, 2011
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