Dairyland USA Corporation v. Richard Roethel / Roethel Cattle Co
Claim Number: FA1110001413039
Complainant is Dairyland USA Corporation (“Complainant”), represented by Meredith D. Pikser, New York, USA. Respondent is Richard Roethel / Roethel Cattle Co (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chefwarehouse.info>, registered with Wild West Domains.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2011; the National Arbitration Forum received payment on October 26, 2011.
On October 26, 2011, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <chefwarehouse.info> domain name is registered with Wild West Domains and that Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@chefwarehouse.info. Also on October 31, 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 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 <chefwarehouse.info> domain name is confusingly similar to Complainant’s THE CHEF’s WAREHOUSE mark.
2. Respondent does not have any rights or legitimate interests in the <chefwarehouse.info> domain name.
3. Respondent registered and used the <chefwarehouse.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dairyland USA Corporation, is a national producer and distributor of specialty food products and ingredients. Complainant’s owns a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for its THE CHEF’S WAREHOUSE mark (Reg. No. 3,539,456 registered December 2, 2008). Complainant uses the mark as its brand name in the specialty foods industry.
Respondent, Richard Roethel / Roethel Cattle Co, registered the disputed domain name on September 20, 2011. The disputed domain name resolves to an inactive website.
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 contends that it has established its rights in the THE CHEF’S WAREHOUSE mark by registering it with the USPTO (Reg. No. 3,539,456 registered December 2, 2008). Complainant has submitted sufficient evidence in the form of trademark certificates which establish that the mark is duly registered and that it is the owner of record. The Panel finds that Complainant has established its rights in the THE CHEF’S WAREHOUSE mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See 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); 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 also contends that Respondent’s <chefwarehouse.info> domain name is confusingly similar to its THE CHEF’S WAREHOUSE mark. The disputed domain name includes a majority of the mark removing the word “the,” an apostrophe, the letter “s,” and the space between terms. The disputed domain name adds the generic top level domain (“gTLD”) “.info.” The Panel finds that the changes made to Complainant’s mark by Respondent fail to sufficiently differentiate the disputed domain name from the THE CHEF’S WAREHOUSE mark, thereby making them confusingly similar under Policy ¶ 4(a)(i). See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has established Policy ¶ 4(a)(i) by showing that it has rights in the THE CHEF’S WAREHOUSE mark and Respondent’s <chefwarehouse.info> domain name is confusingly similar to that mark.
The Panel finds that Complainant has successfully shifted the burden of proof to Respondent under Policy ¶ 4(c) and Policy ¶ 4(a)(ii) by making a prima facie case indicating that Respondent lacks 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)). Respondent failed to file a Response in this matter which allows this Panel to assume that it lacks any rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will make no such assumption prior to examining the record in its entirety and analyzing whether Respondent has rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Richard Roethel/ Roethel Cattle Co.” Respondent has offered no evidence to rebut this assertion. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the evidence on record. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Although Complainant failed to provide direct evidence of Respondent’s current use of the disputed domain name, it did provide an e-mail from Respondent, in which Respondent affirmed Complainant’s contention that the website to which the disputed domain name resolved is inactive. In this same e-mail, Complainant submits evidence that Respondent wished to sell the disputed domain name to Complainant. Based upon this scant evidence, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii) by illustrating that Respondent has not created rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent’s sole purpose of registering the disputed domain name was to sell it to Complainant. Complainant submits evidence that appears to confirm its allegation. In an e-mail submitted by Complainant, Respondent apparently makes an offer to Complainant in which Complainant may purchase the domain name from Respondent. The Panel finds that Respondent’s offer to sell the disputed domain name is affirmative evidence that it registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Complainant posits that Respondent’s failure to make an active use of the disputed domain name supports a finding of bad faith registration and use. An e‑mail submitted by Complainant indicates that the disputed domain name resolves to an inactive website. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii) by showing that Respondent has failed to make an active use of the disputed domain name, while also offering it for sale to Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chefwarehouse.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 30, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page