Sara Lee Foods, LLC v. Crutchees / Todd Crutchfield
Claim Number: FA1301001479359
Complainant is Sara Lee Foods, LLC (“Complainant”), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, USA. Respondent is Crutchees / Todd Crutchfield (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefaircorndogs.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 9, 2013.
On January 10, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <statefaircorndogs.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 January 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2013 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@statefaircorndogs.com. Also on January 10, 2013, 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 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <statefaircorndogs.com> domain name is confusingly similar to Complainant’s STATE FAIR mark.
2. Respondent does not have any rights or legitimate interests in the <statefaircorndogs.com> domain name.
3. Respondent registered and used the <statefaircorndogs.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has registered the STATE FAIR trademark with the United States Patent and Trademark Office (“USPTO”) multiple times (e.g. Reg. No. 834,844 registered September 5, 1967).
Respondent has failed to use the <statefaircorndogs.com> domain name as an active web site since it was registered in 2005. The disputed domain name resolves to a parked website with “click-through” links.
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 has rights in the STATE FAIR trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (e.g. Reg. No. 834,844 registered September 5, 1967). The mark is for “cooked meats in a frozen or refrigerated state” as well as for “corn dogs, burritos and pancakes”. Previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Accordingly, the Panel finds that Complainant has established rights in the STATE FAIR mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <statefaircorndogs.com> domain name is confusingly similar to the STATE FAIR trademark, because it uses the mark in its entirety, while adding only the descriptive term “corn dogs” and the gTLD “.com,” and deleting the spaces in the mark. These minor changes are not sufficient to avoid confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also 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)). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s STATE FAIR mark.
The Panel finds that Complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant states that Respondent has no affiliation with Complainant and has not been commonly known by the disputed domain name. The WHOIS information identifies “Crutchees” as the registrant of the disputed domain name. Past panels have found WHOIS information to be evidence that respondents are not known by disputed domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel similarly finds that Respondent is not known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain name, under Policy ¶¶ 4(c)(i) and 4(c)(iii), as the disputed domain name leads to a parked website containing unrelated links. Past panels have found that hosting unrelated links does not represent a bona fide offering or legitimate use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of <statefaircorndogs.com> under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant additionally notes that Respondent has not used the disputed domain name as an active website since it was registered in 2005, further evidence of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <statefaircorndogs.com> domain name in bad faith by using it to attract Internet users to its website for commercial gain, which is evidence of bad faith usage and registration under Policy ¶ 4(b)(iv). No doubt Respondent generates click-through revenue when users click on the links at the disputed domain name. Past UDRP panels have found the use of unrelated hyperlinks with a confusingly similar domain name to be evidence of bad faith. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith, pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefaircorndogs.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 12, 2013
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