Dixie Consumer Products LLC v. 3F Partners
Claim Number: FA1201001423693
Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is 3F Partners (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dixiecoupons.org>, registered with GoDaddy.com, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2012; the National Arbitration Forum received payment on January 10, 2012.
On January 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <dixiecoupons.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@dixiecoupons.org. Also on January 10, 2012, 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 February 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <dixiecoupons.org> domain name is confusingly similar to Complainant’s DIXIE mark.
2. Respondent does not have any rights or legitimate interests in the <dixiecoupons.org> domain name.
3. Respondent registered and used the <dixiecoupons.org> 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 under its DIXIE mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DIXIE mark (e.g., Reg. No. 120,264 registered January 29, 1918).
Respondent, 3F Partners, registered the <dixiecoupons.org> domain name on June 2, 2011. The disputed domain name currently does not resolve to an active website. Formerly, the disputed domain name resolved to a website that contained information regarding Complainant’s business and hyperlinks that resolved to websites unrelated to Complainant’s business.
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The first prong of the Panel’s analysis is to determine if Complainant owns rights in the DIXIE mark under Policy ¶ 4(a)(i). Past panels found that a complainant can establish rights in a mark for the purposes of Policy ¶ 4(a)(i) if the complainant provides evidence that it owns a trademark registration with the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); 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 provided the Panel with evidence of its trademark registrations with the USPTO for its DIXIE mark (e.g., Reg. No. 120,264 registered January 29, 1918). Consequently, the Panel holds that Complainant owns rights in its DIXIE mark pursuant to Policy ¶ 4(a)(i).
The second prong of the Panel’s analysis requires the Panel to determine if the <dixiecoupons.org> domain name is identical or confusingly similar to Complainant’s DIXIE mark under Policy ¶ 4(a)(i). Previous panels concluded that a disputed domain name is confusingly similar to a complainant’s mark if the only differences between the two are the additions of a generic term and a generic top-level domain (“gTLD”). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Complainant contends that Respondent’s <dixiecoupons.org> domain name is confusingly similar to Complainant’s DIXIE mark because the disputed domain name combines Complainant’s mark with the generic term “coupons” and the gTLD “.org.” The Panel agrees with Complainant and concludes that Respondent’s <dixiecoupons.org> domain name is confusingly similar to Complainant’s DIXIE mark under Policy ¶ 4(a)(i).
The Panel determines that both prongs of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant alleged that Respondent does not have any rights or legitimate interests in the <dixiecoupons.org> domain name. Prior panels 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). See 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels also 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. 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Panel first examines whether or not Respondent is commonly known by the <dixiecoupons.org> domain name under Policy ¶ 4(c)(ii). Past panels determined that a respondent is not commonly known by the disputed domain name if the WHOIS information is not similar to the disputed domain name, the respondent fails to present any evidence, and the complainant did not authorize the respondent to use the complainant’s mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). In this case, the WHOIS information lists “3F Partners” as the registrant of the disputed domain name. Respondent did not respond to this case and did not present any evidence that it is commonly known by the <dixiecoupons.org> domain name. Complainant asserts that Respondent is not associated or affiliated with Complainant and Complainant never authorized Respondent to use Complainant’s DIXIE mark. Based on this evidence, the Panel deems that Respondent is not commonly known by the <dixiecoupons.org> domain name pursuant to Policy ¶ 4(c)(ii).
The Panel next determines if Respondent is making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. Prior panels found that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to host unrelated hyperlinks. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Complainant alleges that Respondent formerly used the <dixiecoupons.org> domain name to provide information about Complainant’s business and to host unrelated hyperlinks. The Panel reviewed the screenshots of the resolving website and determines that Complainant’s description is accurate. Thus, the Panel finds that Respondent made neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <dixiecoupons.org> domain name pursuant to Policy ¶ 4(c)(iii).
Past panels further determined that a respondent lacks rights and legitimate interests in a disputed domain name if the respondent fails to make an active use of the disputed domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant asserts that Respondent currently does not make an active use of the <dixiecoupons.org> domain name. Complainant argues that, after Complainant contacted Respondent, Respondent disabled the resolving website. The Panel determines that Respondent’s failure to make an active use of the <dixiecoupons.org> domain name demonstrates Respondent’s lack of rights and legitimate interests in the <dixiecoupons.org> domain name pursuant to Policy ¶ 4(a)(ii).
As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant presents no evidence or allegations under Policy ¶¶ 4(b)(i) and (ii) so the Panel elects to ignore analyzing Respondent’s registration and use under Policy ¶¶ 4(b)(i) and (ii).
Policy ¶ 4(b)(iii) allows a complainant to demonstrate a respondent’s bad faith registration and use by providing evidence that respondent’s registration and use disrupts the business of the complainant. Complainant does allege that Respondent’s registration and use of the <dixiecoupons.org> domain name disrupts Complainant’s business. However, the Panel fails to find any evidence that the hyperlinks at the resolving website resolve to Complainant’s competitors. Rather, the Panel determines that the evidence in the record indicates that the featured hyperlinks resolve to unrelated, third-party websites, such as a domain name seller, a website selling lotion, and a general coupon website. Based on this evidence, the Panel neglects to find bad faith registration and use under Policy ¶ 4(b)(iii).
Policy ¶ 4(b)(iv) instructs the Panel to decide whether or not Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Prior panels found that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iv) if the disputed domain name resolved to a website hosting unrelated hyperlinks. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the website formerly resolving from the <dixiecoupons.org> domain name that shows the website contains information regarding Complainant’s business and unrelated hyperlinks. Complainant claims that Respondent commercially benefited from the hyperlinks by receiving click-through fees. The Panel believes Complainant and concludes that Respondent registered and used the <dixiecoupons.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Previous panels also found that a respondent’s failure to make an active use of a disputed domain name demonstrates the respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). As noted previously, Complainant alleges that Respondent currently does not make an active use of the <dixiecoupons.org> domain name. Thus, the Panel holds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant additionally argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the DIXIE mark. Complainant argues that Respondent’s former use of the disputed domain name to provide information about Complainant’s products and business indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under 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 <dixiecoupons.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 9, 2012
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