national arbitration forum

 

DECISION

 

Miller Foods, Inc. v. Bette Loughran

Claim Number: FA1209001461674

 

PARTIES

Complainant is Miller Foods, Inc. (“Complainant”), represented by Diane Duhaime of Jorden Burt LLP, Connecticut, USA.  Respondent is Bette Loughran (“Respondent”), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <omaspride.com>, registered with Register.com.

 

PANEL

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

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2012; the National Arbitration Forum received payment on September 7, 2012.

 

On September 10, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <omaspride.com> domain name is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 September 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@omaspride.com.  Also on September 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 October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

  1. Complainant has rights in the OMA’S PRIDE mark.
  2. The mark is used in connection with pet food products and has been since at least as early as February of 2000.
  3. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) registration for the OMA’S PRIDE mark (Reg. No. 2,555,398 filed October 23, 2000; registered April 2, 2002).
  4. The <omaspride.com> domain name is confusingly similar to the OMA’S PRIDE mark as Respondent merely deletes an apostrophe and space from the mark and adds the generic top-level domain (“gTLD”) “.com.”
  5. Respondent does not have rights or legitimate interests in the disputed domain name, as :

                  (a)        Respondent is not commonly known by the <omaspride.com> domain name.

                  (b)        Respondent, an employee of Complainant, was to register the <omaspride.com> domain name for Complainant to offer the OMA’S PRIDE pet food products. Respondent instead registered the disputed domain name in Respondent’s personal name.  The disputed domain name continues to resolve to Complainant’s website for its own use, but Respondent has refused to transfer the domain name into Complainant’s name.

  1. Respondent registered and is using the <omaspride.com> domain name in bad faith.

                  (a)        Respondent offered to sell the disputed domain name to Complainant.

                  (b)        Respondent is a former employee of Complainant’s.

                  (c)        Respondent previously agreed to transfer the domain name and has since refused.

                  (d)        Respondent had actual knowledge of Complainant’s rights in the OMA’S PRIDE mark when it registered the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1.    Complainant is a United States company engaged in the quality food products industry and its subsidiary, Oma’s Pride, is engaged in the pet food industry.

2.    Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) registration for the OMA’S PRIDE mark (Reg. No. 2,555,398 filed October 23, 2000; registered April 2, 2002).

3.    Respondent registered the <omaspride.com> domain name on June 30, 2000 and it resolves to Complainant’s website.

4.    Despite agreeing to do so, Respondent has failed and refused to transfer the registration of the disputed domain name to Complainant.

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."

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts that it has rights in the OMA’S PRIDE mark, used in connection with pet food products. Complainant notes that it is the owner of the USPTO registration for the OMA’S PRIDE mark (Reg. No. 2,555,398 filed October 23, 2000; registered April 2, 2002). Panels have found that registration of a mark with the USPTO is evidence of having rights in that mark and the rights date back to the filing of the registration. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in the OMA’S PRIDE mark dating back to October 23, 2000 pursuant to Policy ¶ 4(a) (i).

 

Complainant also contends that it has been using the OMA’S PRIDE mark in connection with pet food products since at least as early as February 2000. Complainant attaches an affidavit of its President, Sandra A. Trudeau, as evidence of this timeline. See Exhibit 2. Additionally, the USPTO registration for the OMA’S PRIDE mark lists a date of first use as February of 2000. See Exhibit 1. Therefore, the Panel therefore also finds that Complainant has common law rights in the OMA’S PRIDE mark dating back to February 2000 in accordance with Policy ¶ 4(a) (i). See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OMA’S PRIDE mark.

Complainant contends in this regard that the <omaspride.com> domain name is confusingly similar to the OMA’S PRIDE mark. Complainant asserts that Respondent merely took the mark, deleted an apostrophe and space and added the gTLD “.com” to create the disputed domain name. The Panel finds that the deletion of an apostrophe does not negate a finding of confusing similarity. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). The Panel also finds that the deletion of a space and addition of a gTLD is irrelevant to a Policy ¶ 4(a) (i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <omaspride.com> domain name is confusingly similar to the OMA’S PRIDE mark under Policy ¶ 4(a) (i). Complainant has thus made out the third of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has used Complainant’s OMA’S PRIDE trademark in the domain name;

(b) Respondent was an employee of Complainant at the time of the registration of the domain name and was supposed to register it in the name of Complainant;

(c)  Respondent registered the domain name in its own name rather than the name of Complainant and did so without the consent or approval

of Complainant;

(d) Complainant also contends that Respondent is not commonly known by the <omaspride.com> domain name. The Panel notes that the WHOIS record for the <omaspride.com> domain name lists “Bette Loughran” as the domain name registrant.  Further, Complainant asserts that Respondent was an employee of Complainant’s at the time of the domain name registration and that Respondent was not authorized to register the domain name in its personal name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the WHOIS record is a strong determinant in whether a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <omaspride.com> domain name pursuant to Policy ¶ 4(c) (ii);

(e) Complainant next alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant argues that Respondent allows the <omaspride.com> domain name to be used by Complainant to offer Internet users its pet food products. Complainant argues that Respondent was its employee at the time of the domain name registration and that Respondent was to register the domain name in the name of Complainant, but did not do so.  Later, Complainant explains that Respondent agreed to transfer the disputed domain name to Complainant but failed to carry out that agreement and the domain name was not transferred.  Complainant argues that it attempted to get Respondent to re-transfer the disputed domain name, but that Respondent then refused to do so.  The Panel notes that prior UDRP panels have held that a Respondent does not have rights and legitimate interests in a disputed domain name where Respondent was an employee of Complainant and was charged with registering the disputed domain name in the employer’s name.  See Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a) (ii)”); see also Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).  Therefore, the Panel finds that Respondent is not using the disputed domain name for 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);

 (f) Complainant also submits that Respondent offered to sell the disputed domain name to Complainant for, “the price that it cost me to defend myself in the lawsuit.”  See Complainant’s Exhibit 12.  Complainant notes that the parties were involved in prior, unrelated litigation.  Complainant notes that it has offered in the past to pay Respondent’s registration fees of $511.90 that were incurred by Respondent and that the cost of litigation was likely in the thousands of dollars, well above Respondent’s actual costs.  Complainant argues that Respondent’s offer to sell the disputed domain name is also evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii).  As the Panel agrees, it finds accordingly under Policy ¶ 4(a) (ii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, that is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant contends that Respondent registered and is using the <omaspride.com> domain name in bad faith. Complainant points to Respondent’s offer to sell Complainant the disputed domain name as evidence of this claim. According to Complainant, in an e-mail dated June 20, 2012, Respondent states its willingness to sell the domain name for the price that it cost to defend itself in the lawsuit between Complainant and Respondent unrelated to the <omaspride.com> domain name.  Complainant notes that Respondent’s actual costs in maintaining the disputed domain name were $511.90, and that the costs of the past litigation are likely in the thousands of dollars.  Complainant asserts that Respondent is merely holding the domain name registration to make a hefty profit.  Panels have previously found that the willingness to sell a domain name indicates that the Respondent did not register and use the domain for itself but rather so that it could profit from the eventual transfer of the domain name in bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Therefore, the Panel finds that Respondent registered and is using the <omaspride.com> domain name in bad faith under Policy ¶ 4(b) (i), as evidenced by its attempt to sell the domain name to Complainant.

 

Secondly, the Panel notes that it may find bad faith registration and use in this instance even though the disputed domain name has always resolved to Complainant’s official website for the marketing and sale of its goods.  Complainant has asserted in its Complaint that it needs control of its own domain name for its business purposes and the Panel a supports that submission. The Panel in Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011), stated that “although Respondent’s disputed domain name still resolves to Complainant’s own website, Respondent’s registration and use of a disputed domain name that is identical to the mark of another is evidence of Respondent’s bad faith.”  Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a) (iii), regardless of the fact that the disputed domain name continues to resolve to Complainant’s website.

 

Thirdly, Complainant argues that Respondent’s bad faith is clear, in view of Respondent being a former employee of Complainant’s.  According to Complainant, Respondent registered the <omaspride.com> domain name so that Complainant could develop its own website, but Respondent used its personal name rather than Complainant’s name, as the domain name registrant. When Complainant was in contact with Respondent, Complainant asserts that Respondent agreed to the transfer of the domain name to Complainant and even signed documents to this regard. See Exhibit 5. However, Complainant alleges that the transfer never occurred, by no fault of Complainant’s, and now that Respondent is a former employee and not in contact with Complainant, Respondent is refusing to transfer the domain name. Therefore, the Panel finds that Respondent’s position as a former employee of Complainant’s is evidence that Respondent registered and is using the <omaspride.com> domain name in bad faith under Policy ¶ 4(a) (iii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's registration of the company name of his former employer as a domain name is an act of bad faith.").

 

Fourthly, Complainant   contends that as a former employee of Complainant’s, Respondent clearly had actual knowledge of Complainant's rights in the mark when registering the <omaspride.com> domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OMA’S PRIDE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <omaspride.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated: October 10, 2012

 

 

 

 

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