Omaha Steaks International, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1307001509273
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ohmahasteak.com>, registered with Media Elite Holdings Limited.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2013; the National Arbitration Forum received payment on July 11, 2013.
On July 17, 2013, Media Elite Holdings Limited confirmed by e-mail to the National Arbitration Forum that the <ohmahasteak.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@ohmahasteak.com. Also on July 29, 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 August 26, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent has not been commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent has listed the disputed domain name for sale.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iii. Respondent has registered and used the disputed domain name to attract and mislead consumers for its own profit.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and is one of America’s largest marketers of beef. Complainant’s nationwide markets include food service, mail order, incentive, telesales, retail stores, licensed restaurants, and Internet-based sales.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OMAHA STEAKS mark (e.g., Reg. No. 1,458,802, registered September 22, 1987); and for the OMAHASTEAKS.COM mark (Reg. No. 2,414,603, registered December 19, 2000).
3. The earliest date on which Respondent registered the disputed domain name was December 8, 2011.
4. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant alleges that it is one of America’s largest marketers of beef. Complainant’s nationwide markets include food service, mail order, incentive, telesales, retail stores, licensed restaurants, and Internet-based sales. Complainant claims that it is the owner of trademark registrations with the USPTO for the OMAHA STEAKS mark (e.g., Reg. No. 1,458,802, registered September 22, 1987); and for the OMAHASTEAKS.COM mark (Reg. No. 2,414,603, registered December 19, 2000). See Exhibit E. The Panel finds that although Respondent appears to reside in Australia, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides or operates, so long as it can demonstrate rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel concludes that Complainant’s registration of the OMAHA STEAKS and OMAHASTEAKS.COM marks with the USPTO sufficiently evidences its rights in the marks under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OMAHA STEAKS or OMAHASTEAKS.COM marks. Complainant contends that Respondent’s <ohmahasteak.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark because Respondent adds the letter “h” to Complainant’s OMAHASTEAKS.COM mark and deletes the letter “s” at the end of the mark. The Panel finds that Respondent’s inclusion of an additional letter and omission of the letter “s” does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Consequently, the Panel determines that Respondent’s <ohmahasteak.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark pursuant to Policy ¶ 4(a)(i).The same principle applies in the case of the OMAHASTEAKS mark and the disputed domain name is accordingly also confusingly similar to the OMAHASTEAKS mark.
Complainant has thus made out the first of the three elements that it must establish.
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 chosen to take Complainant’s OMAHA STEAKS and OMAHASTEAKS.COM marks and to use them in its domain name, merely adding the letter “h” and deleting the letter “s” thus implying that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant, neither of which is true;
(b) Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant argues that Respondent has not been commonly known by the <ohmahasteak.com> domain name. Complainant alleges that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and further claims that it has not given Respondent permission to use Complainant’s mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Thus, the Panel finds that Respondent is not commonly known by the <ohmahasteak.com> domain name under Policy ¶ 4(c)(ii);
(e)Complainant contends that Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s <ohmahasteak.com> domain name leads to a pay-per-click directory featuring competing links titled “Mail Order Steaks,” “Omaha Steaks,” “Omaha Steaks Deals,” and others. See Exhibit H. Complainant argues that Respondent presumably receives pay-per-click fees from these linked websites. The Panel therefore determines that Respondent is not using the <ohmahasteak.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
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.
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 argues that Respondent has also listed the disputed domain name for sale. Complainant includes its Exhibit Q as evidence showing the WHOIS information page, with the message on top, “OhMahaSteak.com is for sale.” See Complainant’s Exhibit Q. The Panel finds that by listing the disputed domain name for sale, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Secondly, Complainant argues that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s <ohmahasteak.com> domain name leads to a hyperlink directory featuring links that directly compete with Complainant’s business titled “Mail Order Steaks,” “Omaha Steaks,” “Omaha Steaks Deals,” and others. See Exhibit H. Complainant asserts that these links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Therefore, the Panel holds that Respondent’s use of the <ohmahasteak.com> domain name disrupts Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Thirdly, Complainant claims that Respondent has registered and used the disputed domain name to attract and mislead consumers for its own profit. The Panel observes that Respondent’s <ohmahasteak.com> domain name links to a website featuring competing links. See Exhibit H. Complainant alleges that Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Panel agrees that Respondent uses the <ohmahasteak.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attracting Internet users to its own website for commercial gain. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Fourthly, Complainant contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel observes that Respondent adds an additional letter “h” and deletes the second letter “s” in Complainant’s OMAHASTEAKS.COM mark to create the <ohmahasteak.com> domain name. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel determined that “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Thus, the Panel finds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii).
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 mark and in view of the conduct that Respondent has engaged in when using the domain name, 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ohmahasteak.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 29, 2013
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