national arbitration forum

 

DECISION

 

Edible Communities, Inc. v. Vaughn Images

Claim Number: FA1201001424593

 

PARTIES

Complainant is Edible Communities, Inc. (“Complainant”), represented by William 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 are <ediblemilwaukee.com> and <ediblehouston.com>, registered with Wild West Domains, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 13, 2012.

 

On January 13, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <ediblemilwaukee.com> and <ediblehouston.com> domain name are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names.  Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@ediblemilwaukee.com and postmaster@ediblehouston.com.  Also on January 16, 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 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant owns trademark registrations for the EDIBLE trademark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 3,474,533, filed November 6, 2006, and registered July 29, 2008). 

 

Complainant uses the EDIBLE mark in conjunction with geographic identifiers to tailor culinary and dining publications to a region or city. 

 

Respondent registered the disputed domain names on August 30, 2007. 

 

Both domain names resolve to a website offering links to the websites of Complainant’s competitors in the culinary industry.

 

Respondent’s <ediblemilwaukee.com> and <ediblehouston.com> domain names are confusingly similar to Complainant’s EDIBLE mark.

 

Respondent is not commonly known by the disputed domain names.

 

Complainant has not authorized or licensed Respondent to use Complainant’s EDIBLE trademark for any purpose.

 

Respondent does not have any rights to or legitimate interests in the domain names <ediblemilwaukee.com> and <ediblehouston.com>.

 

Respondent registered and uses the domain names <ediblemilwaukee.com> and <ediblehouston.com> in bad faith.

 

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

 

FINDINGS

(1)  the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain names; and

(3)  the same domain names were registered and are being used by Respondent in bad faith.

 

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 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established its rights in the EDIBLE trademark under Policy ¶ 4(a)(i) by registering it with a national trademark authority, the USPTO.  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in a mark under Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark through registration of the mark with the United States Patent and Trade-mark Office).

 

The disputed domain names are confusingly similar to Complainant’s EDIBLE trademark under Policy ¶ 4(a)(i).  The domain names include the entire mark, while adding geographic identifiers and the generic top-level domain (“gTLD”) “.com.”  Complainant uses the same format when promoting and selling its services in specific geographic areas by adding the appropriate geographic identifier for a particular location.  Respondent’s inclusion of the geographic terms “houston” and “milwaukee” in the contested domain names thus serves to confuse Internet users by their association with Complainant’s mark because that is illustrative of Complainant’s own business practice.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms such as “cancun” to the CHEAPTICKETS mark in forming the domain names <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> permits a finding of confusing similarity between the domain names and the mark under Policy ¶ 4(a)(i)).  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).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

In order to prevail on its allegations under Policy ¶ 4(a)(ii), Complainant must  make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to demonstrate that it has such rights or interests. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

Complainant has made out the requisite prima facie showing under this head of the Policy, while Respondent has failed to submit a response to the Complaint filed in this proceeding.  We are therefore free to conclude that Respondent lacks rights to and legitimate interests in the disputed domain names.  See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):

 

It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.

 

Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.

 

We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by either of the disputed domain names, and that Complainant has not authorized or licensed Respondent to use Complainant’s EDIBLE trademark for any purpose.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain names only as “Vaughn Images,” which does not resemble the contested domain names.  On this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in either of them under Policy ¶ 4(c)(ii).  See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so had failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respon-dent was commonly known by the disputed domain name).  

 

We also observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, in that the domain names resolve to a website offering links to the websites of third parties which are commercial competitors of Complainant.  This use of the domains does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s mark in a domain name to send Internet users to a website which displayed links to the websites of that complainant’s commercial competitors was not a bona fide offering of goods or services);  see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to websites offering travel services that in competition with the business of a complainant was not 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)). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has employed Complainant’s EDIBLE trademark, together with geographic identifiers, to create the disputed domain names.  Respondent’s registration and use of the disputed domain names in the manner alleged in the Complaint disrupts Complainant’s business, thereby demonstrating bad faith registration and use of the domains under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used the domain to operate a commercial search engine with links to the websites of a complainant’s commercial competitors); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website resolving from the <redeemaamiles.com> domain name featured links to the websites of a complainant’s commercial competitors, that respondent’s registration and use of the domain name constituted bad faith disruption of that complainant’s business under Policy ¶ 4(b)(iii)).

 

Moreover, in the circumstances here presented, we may comfortably presume that Respondent receives economic benefits, whether from click-through fees or otherwise, from the operation of the website resolving from each of the contested domain names as alleged in the Complaint. This, taken together with the consid-erations set out above, evidences bad faith registration and use of the domains under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to a complainant’s services); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by using them to operate a commercial search engine with links to the websites of a complainant’s commercial competitors).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the domain names <ediblemilwaukee.com> and <ediblehouston.com> be TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  February 24, 2012

 

 

 

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