Dixie Consumer Products LLC v. Chalit Fernando
Claim Number: FA1109001406559
Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Chalit Fernando (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dixiecoupon.com> and <dixiecoupons.com>, registered with GoDaddy.com.
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 September 8, 2011; the National Arbitration Forum received payment on September 8, 2011.
On September 9, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <dixiecoupon.com> and <dixiecoupons.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 September 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@dixiecoupon.com, postmaster@dixiecoupons.com. Also on September 13, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 7, 2007, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dixiecoupon.com> and <dixiecoupons.com> domain names are confusingly similar to Complainant’s DIXIE mark.
2. Respondent does not have any rights or legitimate interests in the <dixiecoupon.com> and <dixiecoupons.com> domain names.
3. Respondent registered and used the <dixiecoupon.com> and <dixiecoupons.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dixie Consumer Products LLC, manufactures and markets cups, plates, bowls, cutlery, napkins, dispensers, and related tabletop items under its DIXIE mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for its DIXIE mark (e.g., Reg. No. 120,264 registered January 29, 1918).
Respondent, Chalit Fernando, registered the <dixiecoupon.com> and <dixiecoupons.com> domain names on March 6, 2011. The disputed domain names resolve to websites that purport to offer coupons for Complainant’s products but instead provide hyperlinks to third-parties.
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.
The Panel determines that Complainant owns Policy ¶ 4(a)(i) rights in its DIXIE mark based on its trademark registrations with the USPTO (e.g., Reg. No. 120,264 registered January 29, 1918). 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <dixiecoupon.com> and <dixiecoupons.com> domain names fully incorporate Complainant’s DIXIE mark, adding only the generic top-level domain (“gTLD”) “.com” and the generic term “coupon” or “coupons.” The Panel finds that such additions do no remove Respondent’s <dixiecoupon.com> and <dixiecoupons.com> domain names from the realm of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <dixiecoupon.com> and <dixiecoupons.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also 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.”).
Complainant claims that Respondent is not commonly known by the <dixiecoupon.com> and <dixiecoupons.com> domain names and Respondent has not responded with any evidence to contradict this claim. The WHOIS information identifies the registrant of the disputed domain names as “Chalit Fernando,” which the Panel finds is not similar to the disputed domain names. Thus, the Panel concludes that Respondent is not commonly known by the <dixiecoupon.com> and <dixiecoupons.com> domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <dixiecoupon.com> and <dixiecoupons.com> domain names resolve to a website containing pictures of Complainant’s DIXIE products and purports to provide coupons for Complainant’s products. However, according to Complainant, Respondent does not actually provide any coupons and only provides hyperlinks to unrelated third-parties. The Panel holds that Respondent’s attempt to pass itself off as Complainant in order to profit from unrelated hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <dixiecoupon.com> and <dixiecoupons.com> domain names. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As noted above, Respondent uses the <dixiecoupon.com> and <dixiecoupons.com> domain names to resolve to a website that appears to be affiliated with Complainant, as Respondent includes pictures of Complainant’s products and purports to offer coupons. However, Respondent actually provides hyperlinks to unrelated third-parties. The Panel determines that Respondent registered and uses the disputed domain names for the purpose of profiting by creating confusion as to Complainant’s affiliation with the disputed domain names, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The website resolving from the <dixiecoupon.com> and <dixiecoupons.com> domain names contains pictures of Complainant’s DIXIE products and states “How Using a Dixie Coupon Can Increase your Grocery Budget.” The Panel finds that Respondent’s use of these pictures and purported offering of coupons are evidence that Respondent is attempting to pass itself off as Complainant, which is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
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 <dixiecoupon.com> and <dixiecoupons.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2011
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