national arbitration forum

 

DECISION

 

Einstein and Noah Corp. v. Top Investments, LLLP

Claim Number: FA1109001408793

 

PARTIES

Complainant is Einstein and Noah Corp. (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Colorado, USA.  Respondent is Top Investments, LLLP (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <einsteinbrosnutrition.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 26, 2011.

 

On September 23, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <einsteinbrosnutrition.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@einsteinbrosnutrition.com.  Also on September 27, 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 October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <einsteinbrosnutrition.com> domain name is confusingly similar to Complainant’s EINSTEIN BROS. mark.

 

2.    Respondent does not have any rights or legitimate interests in the <einsteinbrosnutrition.com> domain name.

 

3.    Respondent registered and used the <einsteinbrosnutrition.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Einstein and Noah Corp., established EINSTEIN BROS. restaurant in 1995.  Complainant sells fresh-baked bagel goods, breads, and more.  Complainant owns the EINSTEIN BROS. mark and uses it in connection with its restaurant chain.  Complainant holds a number of trademark registrations for the EINSTEIN BROS. mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,060,493 registered on May 13, 1997). 

 

Respondent, Top Investments, LLLP, registered the <einsteinbrosnutrition.com> domain name on September 5, 2009.  The disputed domain name resolves to Respondent’s own website which displays an identical replica of Complainant’s EINSTEIN BROS. mark with a link to Complainant’s official website.  The resolving website displays a “login” link to <nutritionanalysis.com> and a link for <nutrivault.com>, both of which are unrelated to Complainant. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges that it has established rights in the EINSTEIN BROS. mark.  Prior panels have decided that a complainant can establish rights in a mark by registering with a national trademark authority.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Here, Complainant has numerous trademark registrations for its EINSTEIN BROS. mark with the USPTO (e.g., Reg. No. 2,060,493 registered on May 13, 1997).  The Panel concludes that Complainant has demonstrated its rights in the EINSTEIN BROS. mark according to Policy ¶ 4(a)(i). 

 

Complainant also contends that Respondent’s <einsteinbrosnutrition.com> domain name is confusingly similar to the EINSTEIN BROS mark.  Respondent uses the entire mark and only changes it by deleting the space between the words of the mark, deleting the period at the end of “bros,” adding the descriptive word “nutrition,” and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding a gTLD and deleting spaces do not affect a Policy ¶ 4(a)(i) analysis.  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).  Additionally, the Panel finds that deletion of a punctuation mark does not sufficiently distinguish the disputed domain name from Complainant’s mark.  See Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”).  Finally, the Panel finds that adding a descriptive word such as “nutrition,” which relates to Complainant’s business in the restaurant and food industry, does not adequately distinguish the disputed domain name.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The Panel concludes that Respondent’s <einsteinbrosnutrition.com> domain name is confusingly similar to Complainant’s EINSTEIN BROS. mark under Policy ¶ 4(a)(i).

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

Complainant argues the Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant must initially make a prima facie showing in support of its claims against Respondent and then the burden shifts to the Respondent to show that it does have rights and legitimate interests.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”).  The Panel holds that Complainant has made out a prima facie case in this instance.  Respondent failed to respond to the Complaint, however, leaving the Panel little choice but to assume that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel will first look at the record to decide whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.

 

Complainant states that Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies Respondent as “Top Investments, LLLP,” which is not similar to the disputed domain name.  Complainant also states that it has never licensed Respondent to use its EINSTEIN BROS. mark within the disputed domain name.  The Panel finds that Respondent is not commonly known by the <einsteinbrosnutrition.com> domain name, pursuant to Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise.  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 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).

 

Respondent’s disputed domain name resolves to its own website which features Complainant’s identical EINSTEIN BROS. mark and design and attempts to pass itself off as Complainant’s official website.  The resolving website also features a link to Complainant’s official website, as well as links to <nutritionanalysis.com> and <nutrivaullt.com>.  Respondent likely receives click-through fees from the third-party links. The Panel finds that Respondent’s attempt to operate a website and pass it off as affiliated with Complainant, while also displaying third-party links to unrelated websites, is not a bona fide offering of good or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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  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).

 

The Panel finds the elements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

Respondent’s <einsteinbrosnutrition.com> domain name resolves to Respondent’s own website which displays Complainant’s official EINSTEIN BROS. mark and design, a link to Complainant’s official website, and links to unrelated nutrition websites.  The use of the confusingly similar disputed domain name, Complainant’s logo and mark, and the indication that the website provides Complainant’s nutritional information, creates a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name.  Respondent tries to profit from this confusion by collecting click through fees from the third-party links.  The Panel concludes that Respondent’s registration and use of the <einsteinbrosnutrition.com> domain name 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

At the time Respondent registered the disputed domain name, Complainant had used its EINSTEIN BROS. mark for nearly 15 years and claims that it was well known in the marketplace.  Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the EINSTEIN BROS. mark, evidenced by the link on the resolving website, which reroutes to Complainant’s official website, and the use of Complainant’s design logo and mark.  Complainant also held numerous USPTO trademark registrations for the EINSTEIN BROS. mark at the time of the disputed domain name registration.  While previous panels have determined that constructive notice is not sufficient for a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant’s rights in the EINSTEIN BROS mark and therefore registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <einsteinbrosnutrition.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  November 3, 2011

 

 

 

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