national arbitration forum

 

DECISION

 

Dixie Consumer Products LLC v. erd ltd inc

Claim Number: FA1112001421174

 

PARTIES

Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA.  Respondent is erd ltd inc (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dixiekups.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.

 

On December 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dixiekups.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2012 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@dixiekups.com.  Also on December 28, 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 a formal 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 <dixiekups.com> domain name is confusingly similar to Complainant’s DIXIE mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Dixie Consumer Products LLC, is the owner of the DIXIE mark. Complainant own, through the United States Patent and Trademark Office (“USPTO”), numerous trademark registrations for the DIXIE mark (e.g., Reg. No. 732,447 registered June 5, 1962). Complainant uses the mark in connection with the manufacture and marketing of cups, plates, bowls, cutlery, napkins, dispensers, and related tabletop items.

 

Respondent, erd ltd inc, registered the disputed domain name on October 10, 2011. The <dixiekups.com> domain name resolves to a website which displays links to competing products under headings such as “Paper Cups,” “Cup Dispensers Sale,” and “Plastic Cups.”

 

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 formal 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 claims rights in the DIXIE mark under Policy ¶ 4(a)(i).  In support of this claim, Complainant provides the Panel with a table of its trademark registrations with the USPTO and copies of its trademark registration certificates for its DIXIE mark (e.g., Reg. No. 732,447 registered June 5, 1962).  After reviewing the certificates and determining that Complainant is the owner of the trademark registrations, the Panel concludes that Respondent owns rights in the DIXIE mark pursuant to Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s <dixiekups.com> domain name is confusingly similar to Complainant’s DIXIE mark.  Complainant argues that the disputed domain name fully incorporates Complainant’s DIXIE mark and only adds the misspelled generic term “kups” and the generic top-level domain (“gTLD”) “.com.”  After comparing the disputed domain name and Complainant’s mark, the Panel determines that the additions of a generic term and a gTLD fail to adequately distinguish the disputed domain name from the mark.  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Consequently, the Panel finds that Respondent’s <dixiekups.com> domain name is confusingly similar to Complainant’s DIXIE mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant satisfies Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Where a complainant makes a prima facie case in support of the its allegations, the respondent has the burden of disproving these claims. 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)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the respondent does not submit a response to the complaint, the panel may infer that the respondent does not have rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this is supported by evidence amounting to a prima facie case.  As Respondent has not submitted a formal response, the Panel may infer that Respondent does not have rights or legitimate interests in the <dixiekups.com> domain name. However, the Panel will review the record for information which suggests otherwise according to the Policy ¶ 4(c) factors.

 

Complainant alleges that Respondent is not commonly known by the <dixiekups.com> domain name.  The Panel notes that the WHOIS information lists “erd ltd inc” as the registrant of the <dixiekups.com> domain name, which the Panel finds is not similar to Complainant’s DIXIE mark.  Based on the WHOIS information and the lack of evidence from Respondent, the Panel finds that Respondent is not commonly known by the <dixiekups.com> domain name for the purposes of Policy ¶ 4(c)(ii).  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 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 asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <dixiekups.com> domain name.  Complainant claims that Respondent’s <dixiekups.com> domain name resolves to a website that hosts hyperlink advertisements that resolve to Complainant’s competitors’ websites.  Complainant avers that Respondent offers these hyperlinks under headings such as “Paper Cups,” “Cup Dispensers Sale,” and “Plastic Cups.”  Complainant further contends that Respondent commercially benefits from the hyperlinks by receiving a fee each time an Internet user clicks on one of the hyperlinks.  Complainant provides a screenshot of the resolving website.  The Panel finds that Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <dixiekups.com> domain name under Policy ¶ 4(c)(iii).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

The Panel finds Complainant satisfies Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and uses the <dixiekups.com> domain name in bad faith because the resolving website disrupts Complainant’s business.  Complainant claims, and the screenshot reflects, that Respondent’s <dixiekups.com> domain name resolves to a website that hosts competing hyperlinks.  The Panel presumes that Internet users interested in Complainant and Complainant’s products may purchase products from Complainant’s competitors because of Respondent’s registration and use of the disputed domain name.  Therefore, the Panel finds that Complainant’s business is disrupted as Respondent diverts consumers to competitors, which constitutes bad faith registration and use of the <dixiekups.com> domain name pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)

 

According to Complainant, Respondent also registered and uses the <dixiekups.com> domain name in bad faith because Respondent attempts to commercially benefit from Internet user confusion as to Complainant’s affiliation with the disputed domain name.  Complainant alleges that Respondent receives click-through fees from the hyperlinks found on the resolving website.  The Panel determines that Respondent’s registration of the confusingly similar disputed domain name evidences Respondent’s attempt to create confusion as to Complainant’s affiliation with the disputed domain name.  Thus, the Panel finds that Respondent registered and uses the <dixiekups.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant)

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the DIXIE mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds that Respondent had actual notice of Complainant’s trademark rights.  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 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).

 

The Panel finds Complainant satisfies Policy ¶ 4(a)(iii).

 

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 <dixiekups.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  February 4, 2012

 

 

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