Mars, Incorporated v. victor silva
Claim Number: FA1207001452966
Complainant is Mars, Incorporated (“Complainant”), represented by Anthony D. Peluso of Arent Fox LLP, Washington D.C., USA. Respondent is victor silva (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysnickers.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2012; the National Arbitration Forum received payment on July 11, 2012.
On Jul 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mysnickers.com> 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 July 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@mysnickers.com. Also on July 12, 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 August 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <mysnickers.com> domain name is confusingly similar to Complainant’s SNICKERS mark.
2. Respondent does not have any rights or legitimate interests in the <mysnickers.com> domain name.
3. Respondent registered or used the <mysnickers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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.”).
Complainant claims that it established rights in the SNICKERS mark when Complainant registered the mark with the USPTO (e.g., Reg. No. 239,311 registered February 28, 1928). Complainant submits trademark certificates and printouts from the USPTO website to support its claim regarding the SNICKERS mark. See Complainant’s Exhibit C. Based upon the evidence provided, the Panel concludes that Complainant established its rights in the SNICKERS mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant also claims that Respondent’s <mysnickers.com> domain name is confusingly similar to Complainant’s SNICKERS mark. The Panel notes that the disputed domain name includes the entire mark, while adding the generic term “my” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent failed to sufficiently different the disputed domain name from Complainant’s SNICKERS mark, and finds that the two are confusingly similar under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Although Complainant failed to argue that Respondent is not commonly known by the disputed domain name, the Panel may still address the issue based upon the facts presented. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “victor silva.” The Panel also notes that no evidence has been presented that may be construed so as to support a finding to the contrary. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate use of the disputed domain name. Complainant states that Respondent resolves the disputed domain name to a website offering links to Complainant’s competitors in the candy industry including Harry and David and the Bulk Candy Store. The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See H-D Michigan 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).
Complainant also contends that Respondent attempted to sell the disputed domain name to Complainant for $1,500.00 and had a passive offer to sell the disputed domain name through public auction for $4,500.00. Previous panels have determined that offers to sell a disputed domain name indicate a lack or rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). Therefore, the Panel finds that Respondent’s offers to sell the disputed domain name further support a finding that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent attempted to sell the disputed domain name to Complainant for $1,500.00 and had a passive offer to sell the disputed domain name through public auction for $4,500.00. The Panel notes that Respondent admits to offering the disputed domain name for sale in the Other Correspondence submitted. Based upon the direct and passive offers to sell the disputed domain name, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Complainant also alleges that Respondent owns over 117 domain names, many of which include the marks of third parties and the term “my” as in the disputed domain name. Complainant submits the registration information for the other domain names Complainant alleges Respondent registered. See Complainant’s Exhibit K. The Panel notes that many of the third-party domain names appear to be registered in the same format as the disputed domain name in this case, which is including the entire mark and the term “my” immediately preceding it. Based upon the information provided, the Panel finds that Respondent engaged in a pattern of infringing registrations and concludes that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet uses to its website by creating a likelihood of confusion with Complainant’s SNICKERS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant states that the disputed domain name resolves to a website offering links to its competitors in the candy industry, like Harry and David and the Bulk Candy Store. The Panel infers that Respondent generates revenue by collecting a click-through fee for each Internet user diverted to the linked websites. The Panel finds that Respondent is trying gain commercially by confusing Internet users into clicking on the links offered from its website, and concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mysnickers.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 20, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page