Dixie Consumer Products LLC v. Michael Beattie
Claim Number: FA1110001410822
Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Michael Beattie (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dixiecupdispenser.net>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2011; the National Arbitration Forum received payment on October 10, 2011.
On October 11, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <dixiecupdispenser.net> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 October 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@dixiecupdispenser.net. Also on October 12, 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 November 7, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dixiecupdispenser.net> domain name is confusingly similar to Complainant’s DIXIE mark.
2. Respondent does not have any rights or legitimate interests in the <dixiecupdispenser.net> domain name.
3. Respondent registered and used the <dixiecupdispenser.net> domain name 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. Complainant owns multiple trademark registrations for the DIXIE mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 120,264 registered January 29, 1918;
Reg. No. 2,921,579 registered January 25, 2005;
Reg. No. 2,985,457 registered August 16, 2005;
Reg. No. 3,054,693 registered January 31, 2006; &
Reg. No. 3,098,275 registered May 30, 2006.
Respondent, Michael Beattie, registered the <dixiecupdispenser.net> domain name on February 5, 2010. The disputed domain name resolves to a pay-per-click link directory advertising both competing and unrelated 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.
Complainant owns multiple trademark registrations for the DIXIE mark with the USPTO:
Reg. No. 120,264 registered January 29, 1918;
Reg. No. 2,921,579 registered January 25, 2005;
Reg. No. 2,985,457 registered August 16, 2005;
Reg. No. 3,054,693 registered January 31, 2006; &
Reg. No. 3,098,275 registered May 30, 2006.
The Panel finds that Complainant has therefore established rights in the DIXIE mark for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Automotive Racing Prods., Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); 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).
Complainant argues that Respondent’s <dixiecupdispenser.net> domain name is confusingly similar to Complainant’s DIXIE mark because the disputed domain name is comprised of the mark, the descriptive terms “dispenser” and “cup,” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of descriptive terms to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also determines that the presence of a gTLD does not negate a finding of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore concludes that Respondent’s <dixiecupdispenser.net> domain name is confusingly similar to Complainant’s DIXIE mark under Policy ¶ 4(a)(i).
The Panel concludes Policy ¶ 4(a)(i) is met.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. The Panel, however, elects to consider the evidence in record in light of the Policy ¶ 4(c) factors in order to determine if Respondent has any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also 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 and has not ever been associated or affiliated with Complainant. Complainant alleges that it has never authorized Respondent to use the DIXIE mark in any way. The WHOIS information for the disputed domain name identifies the registrant as “Michael Beattie,” a name which has no apparent connection to the disputed domain name. The Panel therefore holds, pursuant to Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <dixiecupdispenser.net> domain name and consequently lacks rights and legitimate interests. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 respondent was commonly known by the disputed domain name).
Complainant
argues that the <dixiecupdispenser.net> domain name resolves to a
website that displays both competing and unrelated links to third parties and
that these links generate revenue for Respondent. Complainant also asserts that
Respondent purportedly uses the disputed domain name as an informational site
about Complainant’s DIXIE cups and dispensers. Complainant contends that
neither the information about Complainant’s products nor the pay-per-click
links on the resolving website constitute a bona fide offering of goods
or services or a legitimate noncommercial or fair use according to Policy ¶¶
4(c)(i) and 4(c)(iii). The Panel agrees with Complainant. See
Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003)
(holding that the respondent’s use of the <hpcanada.com> domain name to
post links to commercial websites and subject Internet users to pop-up
advertisements was not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name); 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 concludes Policy ¶ 4(a)(ii) is met.
Complainant contends that Respondent’s <dixiecupdispenser.net> domain name resolves to a website containing links to third-party websites, some of which compete with Complainant by offering other brands of cups, dispensers, dinnerware, etc. These pay-per-click links disrupt Complainant’s business by diverting intending consumers from Complainant’s actual website to the websites of the third parties advertised in the pay-per-click links. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors show bad faith registration and use under 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent uses the DIXIE mark in the <dixiecupdispenser.net> domain name in order to capitalize on consumer confusion as to the source, sponsorship, affiliation, or endorsement with Complainant. Complainant alleges that Respondent intends to profit from Internet users attracted to the disputed domain name because of the presence of Complainant’s DIXIE mark when they click on the displayed pay-per-click links and generate click-through revenue. The Panel finds Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitute bad faith registration and use 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 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).”).
Complainant asserts that its DIXIE trademark enjoys worldwide fame and has a long, well-known history of use. Complainant argues that this fame and recognition, combined with the fact that Respondent’s website references Complainant’s DIXIE mark and products, reveals that Respondent had actual knowledge of Complainant’s rights in the DIXIE mark at the time the disputed domain name was registered. While panels have been reluctant to base a finding of bad faith on constructive knowledge alone, the Panel here concludes that Respondent had actual knowledge of Complainant’s rights in the mark, which supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also 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).
The Panel concludes Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dixiecupdispenser.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 17, 2011
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