Grandmother's, Inc. v. Above.com Domain Privacy
Claim Number: FA1206001449279
Complainant is Grandmother's, Inc. (“Complainant”), represented by Denise C. Mazour of McGrath North Mullin & Kratz, PC LLO, Nebraska, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <donandmillies.com>, registered with Above.com, Pty. Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2012; the National Arbitration Forum received payment on June 18, 2012.
On June 20, 2012, Above.com, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <donandmillies.com> domain name is registered with Above.com, Pty. Ltd. and that Respondent is the current registrant of the name. Above.com, Pty. Ltd. has verified that Respondent is bound by the Above.com, Pty. Ltd. 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@donandmillies.com. Also on June 21, 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 July 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant registered the DON & MILLIE’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,758,997 registered March 16, 1993), and claims to own rights in the mark based on such registration.
Complainant uses the DON & MILLIE’S mark in connection with restaurant, bar, and lounge services, and first used the mark in 1989.
Respondent’s disputed domain name resolves to a website that displays third-party hyperlinks leading to websites in competition with Complainant’s business.
The <donandmillies.com> domain name is nearly identical to Complainant’s mark.
Respondent does not possess rights or legitimate interests in the disputed domain name, as Respondent has not been commonly known by the domain name and does not have permission to use the DON & MILLIE’S mark.
Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent disrupts Complainant’s business and collects profit as a result of its use of the disputed domain name.
Respondent was aware of Complainant’s rights in the DON & MILLIE’S mark when it registered the <donandmillies.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for the DON & MILLIE’S mark.
The at-issue domain name was registered after Complainant acquired trademark rights in DON & MILLIE’S.
Respondent was aware of the DON & MILLIE’S mark at the time it registered the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s disputed domain name resolves to a website that displays third-party hyperlinks leading to websites in competition with 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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Notwithstanding that the domain name registration is not in the country where Respondent appears to reside, Complainant demostrates that it has rights in the DON & MILLIE’S mark for the purposes of Policy ¶4(a)(i) through its registration of the mark with the USPTO. See 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The <donandmillies.com> domain name differs from Complainant’s trademark by the addition of the generic top-level domain “.com,” the removal of the apostrophe and spaces, and by the replacement of the ampersand with the word “and.” These alterations are individually and collectively insufficient to differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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 Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore the Panel finds that the at-issue domain name is confusingly similar to Complainant’s trademark.
Respondent lacks rights and legitimate interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent is not authorized to use Complainant’s trademark. Furthermore, there is no evidence tending to prove that Respondent is commonly known by the <donandmillies.com> domain name and WHOIS information indicates to the contrary that the domain name owner is Above.com. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (the respondent lacked rights or legitimate interests in the disputed domain name when no evidence on the record demonstrated that the respondent was commonly known by the domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), (finding that the WHOIS record did not support a finding that the respondent was commonly known by the disputed domain name). These circumstances preclude any suggestion that Respondent is commonly known by the <donandmillies.com> domain name under Policy ¶ 4(c)(ii).
Likewise, rights and interests in respect of the domain name are not demonstrated under Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <donandmillies.com> domain name because the referenced website includes hyperlinks to competing third parties. Respondent’s use of the at‑issue domain name in this manner is 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). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name 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)).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
By displaying hyperlinks to competing third-party businesses on the <donandmillies.com> website and thereby disrupting Complainant’s business, Respondent acted in bad faith pursuant to Policy 4(c)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (the respondent used the resolving website to lead Internet users to the complainant’s competitors, which constituted bad faith registration and use); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), (finding that respondent’s website, which featured hyperlinks to competing businesses, was evidence that the respondent’s use of the disputed domain name amounted to disruption).
Furthermore, it is reasonable to conclude that Respondent collects “click-through” fees if and when <donandmillies.com> website visitors click on the website’s posted hyperlinks. It is also apparent that Respondent selected the <donandmillies.com> domain name because it is similar to Complainant’s DON & MILLIE’S trademark. The similarity creates confusion among Internet users and ultimately benefits Respondent by increasing traffic to its <donandmillies.com> website. Given the foregoing, the Panel finds that Respondent registered the at‑issue domain name in bad faith under Policy ¶ 4(b)(iv). See 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); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, DON & MILLIE’S is an arbitrary, or perhaps slightly suggestive, trademark. The unique nature of Complainant’s mark, Respondent’s use of the at‑issue domain name and the absence of any evidence of a good faith basis for registering the at‑issue domain name, together demonstrate that Respondent was aware of Complainant’s rights in the DON & MILLIE’S mark when it registered <donandmillies.com>. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Respondent’s prior knowledge of Complainant’s trademark is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <donandmillies.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 19, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page