Dixie Consumer Products LLC v. Mario Devries
Claim Number: FA1207001453670
Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Mario Devries (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dixieplates.info>, registered with GoDaddy.com LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 17, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 17, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arb-itration Forum that the <dixieplates.info> domain name is registered with Go-Daddy.com LLC and that Respondent is the current registrant of the name. Go-Daddy.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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@dixieplates.info. Also on July 18, 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 tech-nical, 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 8, 2012, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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 has rights in the DIXIE mark, which is used in connection with the matketing of cups, plates, bowls, cutlery, napkins, dispensers, and related tabletop items.
Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the DIXIE mark (Reg. No. 120,264, registered January 29, 1918).
Respondent registered the <dixieplates.info> domain name on May 26, 2012.
The <dixieplates.info> domain name is confusingly similar to the DIXIE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has never been associated or affiliated with Complainant, and Com-plainant has never authorized Respondent to use its DIXIE trademark.
Respondent has neither any rights to nor any legitimate interests in the disputed domain name.
The <dixieplates.info> domain name resolves to a website which generates in-come for Respondent from pay-per-click advertising links to websites offering the goods of both Complainant and Complainant’s commercial competitors.
The <dixieplates.info> domain name is disruptive to Complainant’s business.
The <dixieplates.info> domain name is intended to profit Respondent by capital-izing on consumer confusion as to the domain name’s source or sponsorship.
Respondent knew of Complainant’s rights in the DIXIE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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 name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Vert-ical 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 reason-able 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.”
Complainant has rights in the DIXIE trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).
Turning then to the central question under Policy ¶ 4(a)(i), we are persuaded from our review of the record that the <dixieplates.info> domain name is con-fusingly similar to the DIXIE trademark. The domain name includes the entire mark, with the addition of the term “plates,” which describes Complainant’s DIXIE-branded offerings, and the generic top-level domain (“gTLD”) “.info.” These alterations of the mark, made in creating the domain name, do not avoid a finding of confusing similarity as between the domain name and the mark from which it was derived. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from a complainant’s DURACELL mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine 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 Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <dixieplates.info> domain name, that Respondent is not associated or affiliated with Complainant, and that Complainant has never authorized Respondent to use the DIXIE mark. Moreover, the WHOIS record for the <dixieplates.info> domain name identifies he registrant of the disputed domain name only as “Mario Devries,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <dixieplates.info> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under the provisions of Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent lacks rights to and legitimate interests in the disputed domain name in that the <dixieplates.info> domain name resolves to a website which contains pay-per-click links to websites offering the goods of Complainant’s com-mercial competitors. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name Policy ¶ 4(c)(iii). See, for example, Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel there holding that the display of links to the websites of a complainant’s competitors does not evidence that a respondent has rights to and legitimate interests in a disputed domain name un-der either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name is disruptive to Complainant’s business in that it re-solves to a website displaying pay-per-click links to the websites of others offering the goods of Complainant’s commercial competitors. This is evidence that Respondent both registered and uses the domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), a panel there holding that the display of competing links on the web-site resolving from a disputed domain name was disruptive to the business of a UDRP complainant and in bad faith within the contemplation of Policy ¶ 4(b)(iii).
In addition, we are persuaded from the evidence that Respondent’s employment of the contested <dixieplates.info> domain name in the manner alleged in the Complaint is in bad faith under Policy ¶ 4(b)(iv) in that the domain name, which is confusingly similar to Complainant’s DIXIE trademark, is intended to capitalize on consumer confusion as to the possibility of the domain name’s sponsorship by Complainant in order to generate a profit for Respondent. Again see Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a re-spondent engaged in bad faith registration and use of disputed domain names under Policy ¶ 4(b)(iv) by using them to operate, for its profit, a commercial search engine with links to websites featuring the products of a complainant’s competitors).
Finally under this head of the Policy, we conclude that Respondent knew of Complainant’s rights in the DIXIE mark when it registered the <dixieplates.info> domain name, which stands as independent evidence that Respondent both registered and uses the domain name in bad faith. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008):
That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
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 <dixieplates.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 22, 2012
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