LC Trademarks, Inc. v. Stefan Tamburro / Design Made Simple
Claim Number: FA1111001415481
Complainant is LC Trademarks, Inc. (“Complainant”), represented by David R. Haarz of Harness, Dickey & Pierce, P.L.C., Virginia, USA. Respondent is Stefan Tamburro / Design Made Simple (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hot-n-ready.com>, registered with 1 & 1 Internet AG.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2011; the National Arbitration Forum received payment on November 15, 2011.
On November 17, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <hot-n-ready.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@hot-n-ready.com. Also on November 21, 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 December 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Each party submitted informal email correspondence to the Forum, which was not considered by the Panel.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hot-n-ready.com> domain name is identical to Complainant’s HOT-N-READY mark.
2. Respondent does not have any rights or legitimate interests in the <hot-n-ready.com> domain name.
3. Respondent registered and used the <hot-n-ready.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LC Trademarks, Inc., is a carry out pizza chain that uses its HOT-N-READY mark to market its pizzas. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its HOT-N-READY mark (Reg. No. 3,030,991 registered December 20, 2005).
Respondent, Stefan Tamburro / Design Made Simple, registered the <hot-n-ready.com> domain name on December 8, 2009. The <hot-n-ready.com> domain name resolves to a website that hosts hyperlinks to Complainant’s website and the websites of Complainant’s competitors in the pizza industry.
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 finds that Complainant owns rights in its HOT-N-READY mark for the purposes of Policy ¶ 4(a)(i) based on its trademark registrations with the USPTO.
In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panels found that a trademark registration with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <hot-n-ready.com> domain name is identical to Complainant’s HOT-N-READY mark. The only difference between the disputed domain name and Complainant’s mark is the addition of the generic top-level domain (“gTLD”) “.com,” insufficient to distinguish it from the mark. In Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007), and Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001), the panels determined that the addition of a gTLD was irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel finds that Respondent’s <hot-n-ready.com> domain name is confusingly similar to Complainant’s HOT-N-READY mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant satisfies Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in any of the <hot-n-ready.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <hot-n-ready.com> domain name. Complainant states that Respondent is not licensed, permitted, or authorized to use Complainant’s HOT-N-READY mark. Complainant provides the WHOIS information that identifies “Stefan Tamburro / Design Made Simple” as the registrant of the disputed domain name. Respondent does not provide any evidence that it is commonly known by the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panels held that a respondent is not commonly known by a disputed domain name if the complainant did not license the respondent to use the complainant’s mark, the WHOIS information was not similar to the disputed domain name, and the respondent failed to provide any affirmative evidence. Consequently, the Panel holds that Respondent is not commonly known by the <hot-n-ready.com> domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent’s <hot-n-ready.com> domain name resolves to a website that hosts hyperlinks to Complainant’s competitors in the pizza industry, such as “Domino’s Pizza” and “Papa John’s Pizza.” In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panels concluded that a respondent lacks rights and legitimate interests in a disputed domain name when the domain name resolves to a website hosting competing hyperlinks. The Panel this finds that Respondent does not make 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 <hot-n-ready.com> domain name.
The Panel concludes that Complainant satisfies Policy ¶ 4(a)(ii).
Complainant does not make any arguments under Policy ¶ 4(b)(iii). However, Complainant does claim that Respondent’s <hot-n-ready.com> domain name resolves to a website hosting competing hyperlinks. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels found that such a use evidences bad faith registration and use under Policy ¶ 4(b)(iii). Therefore, the Panel concludes that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use of the <hot-n-ready.com> domain name because the disputed domain name disrupts Complainant’s business by facilitating competition with Complainant.
Respondent registered and uses the <hot-n-ready.com> domain name in bad faith by attempting to create confusion as to Complainant’s affiliation with the disputed domain name and profit from that confusion. By using Complainant’s HOT-N-READY mark, Respondent attempts to create a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of Respondent’s website. Respondent no doubt profits from its use of the disputed domain name by receiving click-through fees. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panels held that a respondent’s registration and use of a domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Thus, the Panel concludes that Respondent’s registration and use constitutes Policy ¶ 4(b)(iv) bad faith.
The Panel concludes that Complainant satisfies 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 <hot-n-ready.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 28, 2011
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