Edible Communities, Inc. v. Vaughn Images
Claim Number: FA1111001414680
Complainant is Edible Communities, Inc. (“Complainant”), represented by William D. Schultz of Merchant & Gould P.C., Minnesota, USA. Respondent is Vaughn Images (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edibleomaha.com>, registered with Wild West Domains, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2011; the National Arbitration Forum received payment on November 8, 2011.
On November 9, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <edibleomaha.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 November 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@edibleomaha.com. Also on November 15, 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 December 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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 <edibleomaha.com> domain name is confusingly similar to Complainant’s EDIBLE mark.
2. Respondent does not have any rights or legitimate interests in the <edibleomaha.com> domain name.
3. Respondent registered and used the <edibleomaha.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Edible Communities, Inc., is in the business of providing various goods and services, such as magazines and newsletters featuring the tourism, culinary, and agriculture industries, local growers, food retailers, chefs and food artisans. Complainant owns a family of EDIBLE marks with the United States Patent and Trademark Office (“USPTO”), including many marks that consist of the term EDIBLE combined with another geographic or descriptive term:
EDIBLE Reg. No. 3,474,533 filed November 6, 2006 & registered July 29, 2008;
EDIBLE CAPE COD Reg. No. 3,281,406 registered August 21, 2007;
EDIBLE NUTMEG Reg. No. 3,281,407 registered August 21, 2007;
EDIBLE NATION Reg. No. 3,582,086 registered March 3, 2009; &
EDIBLE ATLANTA Reg. No. 3,282,232 registered August 21, 2007.
Respondent, Vaughn Images, registered the <edibleomaha.com> domain name on August 30, 2007. The disputed domain name resolves to a website hosting a variety of pay-per-click links relating to food items, as well as unrelated goods and services.
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 a family of EDIBLE marks with the USPTO, including the following:
EDIBLE Reg. No. 3,474,533 filed November 6, 2006 & registered July 29, 2008;
EDIBLE CAPE COD Reg. No. 3,281,406 registered August 21, 2007;
EDIBLE NUTMEG Reg. No. 3,281,407 registered August 21, 2007;
EDIBLE NATION Reg. No. 3,582,086 registered March 3, 2009; &
EDIBLE ATLANTA Reg. No. 3,282,232 registered August 21, 2007.
Previous panels, such as those in Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), have held that USPTO trademark registrations conclusively establish a complainant’s rights in a mark. In similar fashion, the Panel here determines that Complainant has adequately proven it owns rights in the EDIBLE mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <edibleomaha.com> domain name is confusingly similar to Complainant’s EDIBLE mark because it merely adds the geographic term “omaha” and the generic top-level domain (“gTLD”) “.com.” In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), panels determined that geographic terms, such as city names, added to a mark did not prevent a finding of confusing similarity. It has also been established, in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), for example, that the presence of a gTLD does not differentiate a disputed domain name. Accordingly, the Panel holds that Respondent’s <edibleomaha.com> domain name is confusingly similar to Complainant’s EDIBLE mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to first present a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Since the Panel finds that Complainant has adequately established a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain name. In light of Respondent’s failure to respond to Complainant’s allegations and carry its burden in proving rights and legitimate interests, the Panel may assume that Respondent does not dispute Complainant’s allegations and accordingly has no rights and legitimate interests in the disputed domain name. 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 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.”). The Panel nevertheless elects to consider all the evidence presented to determine whether Respondent has any rights or legitimate interests in the disputed domain name according to the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not commonly known by the EDIBLE mark or <edibleomaha.com> domain name. Complainant also alleges that Respondent has not received permission from Complainant to use the EDIBLE mark in any way and that Complainant has not licensed the use of the mark to Respondent. The WHOIS information for the disputed domain name identifies the registrant as “Vaughn Images,” which reveals no nominal connection with the disputed domain name. The Panel thus concludes that Respondent is not commonly known by the <edibleomaha.com> domain name and consequently lacks rights and legitimate interests for the purposes of Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant asserts that Respondent uses the <edibleomaha.com> domain name to trick consumers into visiting its resolving website offering advertising links. Complainant’s submitted screenshot shows that the links featured on the resolving website advertise food products in competition with Complainant, as well as unrelated goods and services. Complainant presumes that Respondent commercially profits from these links in the form of pay-per-click fees. The Panel finds that using the confusingly similar disputed domain name to operate such a directory website of pay-per-click links is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 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).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has registered multiple domain names in the past containing Complainant’s EDIBLE mark, which is evidence of a pattern of bad faith domain name registration under Policy ¶ 4(b)(ii). The Panel finds, however, that these other domain names were not involved in prior UDRP proceedings and are not discussed in this proceeding. The Panel therefore concludes that there is insufficient evidence to conclude that Respondent has shown a pattern of bad faith registration according to Policy ¶ 4(b)(ii).
Complainant argues that the links advertised on Respondent’s resolving website divert consumers attempting to reach Complainant to the websites of some of Complainant’s competitors. Complainant alleges that this diversion of Complainant’s customers away from Complainant disrupts its business and shows bad faith registration and use according to Policy ¶ 4(b)(iii). The Panel agrees with Complainant. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent registered the <edibleomaha.com> domain name specifically because of its similarity to Complainant’s EDIBLE mark in order to attract consumers. Complainant argues that the similarity of the disputed domain name to Complainant’s mark and the advertisements for competitors featured on the resolving website help create a likelihood of confusion among consumers as to the source or affiliation of Respondent’s website. Complainant asserts that, as the links generate revenue for Respondent, Respondent registered and uses the disputed domain name in this way for its own profit, which indicates bad faith under Policy ¶ 4(b)(iv). The Panel finds accordingly. 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant also alleges that Respondent registered the <edibleomaha.com> domain name in bad faith because, at the time of the domain name registration, Respondent had constructive and/or actual notice of Complainant’s rights in the EDIBLE mark. While prior panels have determined that constructive knowledge was insufficient for a finding of bad faith, the Panel here concludes that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. The Panel thus determines that Respondent registered the <edibleomaha.com> 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 Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edibleomaha.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 8, 2011
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