Omaha Steaks International, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1307001509276
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, United States. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahoasteaks.com>, registered with Internet.Bs Corp.
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.
Tyrus R. Atkinson, Jr., 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 16, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <omahoasteaks.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@omahoasteaks.com. Also on July 18, 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 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
A. Complainant makes the following contentions:
Respondent’s <omahoasteaks.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark, because the domain name <omahoasteaks.com> differs from the mark by only one character: the additon of the letter “o.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its OMAHA STEAKS mark.
2. Respondent’s <omahoasteaks.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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 asserts that it owns rights in various trademark registrations with the USPTO, including the OMAHA STEAKS mark (e.g., Reg. No. 1,674,686, Registered February 4, 1992) and the OMAHASTEAKS.COM mark (e.g., Reg. No. 2,414,603, Registered December 19, 2000). See Complainant’s Exhibit E. Previous panels have held that a registration with the USPTO is sufficient to establish a complainant’s rights in a mark pursuant to Policy ¶ 4(a)(i). See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel determines that Complainant has sufficiently established is rights in its OMAHA STEAKS and OMAHASTEAKS.COM marks pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that Respondent’s <omahoasteaks.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark under Policy ¶ 4(a)(i). Specifically, it asserts that the disputed domain name differs from its OMAHASTEAKS.COM mark by only one letter: the addition of the letter “o.” Previous panels have held that domain names that merely add one extra character to a mark are confusingly similar to that mark. See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that the disputed domain name differs from Complainant’s mark only by the addition of a single character, and holds that the disputed domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent is not commonly known by its <omahoasteaks.com> domain name pursuant to Policy ¶ 4(c)(ii). Specifically, Complainant alleges that the WHOIS information identifies the registrant of the disputed domain name as “Fundacion Private WHOIS,” which tends to show Respondent is known as “Fundacion Private WHOIS,” not <omahoasteaks.com>. See Complainant’s Exhibit I. Complainant further asserts that Respondent has failed to submit evidence that it is commonly known by the disputed domain name, and that Complainant has not given Respondent permission to use its OMAHASTEAKS.COM mark in a domain name. The Panel notes that in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the disputed 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. Furthermore, in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), a previous panel held that the respondent failed to establish rights and legitimate interests in the disputed domain name where the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Therefore, the Panel determines that the record does not suggest Respondent is commonly known as <omahoasteaks.com> and that Complainant has not authorized Respondent’s use of the disputed domain name. The Panel holds that Respondent is not commonly known by the disputed <omahoasteaks.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent’s use of the disputed domain name is not 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), because Respondent is using the disputed domain name to divert Internet users to websites featuring hyperlinks to websites of unrelated third parties. See Complainant’s Exhibit H (providing a screenshot of the website resolving from the <omahoasteaks.com> domain name, which displays hyperlinks to websites unrelated to Complainant’s steak products such as websites for flights, foreign exchange programs, and legal and insurance services). The Panel notes that previous panel decisions have found that a respondent’s use of a domain name to redirect Internet users to unrelated websites is not a protected use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Because Complainant has provided evidence that the disputed domain name is being used to promote unrelated hyperlinks, the Panel accordingly finds that Respondent’s use of the disputed domain name is not 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).
Complainant alleges that Respondent registered the disputed domain name in bad faith because Respondent offered the domain name for sale to the public. See Complainant’s Exhibit H (providing a screenshot of the website resolving from the <omahoasteaks.com> website, which contains the following statement: “Welcome to: omahoateaks.com. This domain is for sale. Learn more.”). The Panel notes that Complainant does not allege that Respondent made an offer to sell the disputed to domain name to Complainant, but merely that the disputed domain name was placed for sale to the general public. In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel stated, “[t]here is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” Further, in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel stated that the 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).” Thus, the Panel finds that, as in CBS Broad. Inc., supra, Respondent’s <omahoasteaks.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS.COM mark. The Panel determines that Respondent does not have the right to sell the disputed domain name, and that Respondent’s general offer to sell the disputed domain name tends to show bad faith under Policy ¶ 4(b)(i) and Bank of Am. Corp., supra.
Complainant further alleges that Respondent’s bad faith under Policy ¶ 4(a)(iii) is evidenced by Respondent’s pattern of bad faith registration. Complainant asserts that there are multiple adverse UDRP decisions against Respondent. See Complainant’s Exhibit N (containing three prior UDRP decisions in which a domain name registered by Respondent “Fundacion Private Whois / Domain Administrator” was ordered to be transferred). The Panel notes that previous panels have found that prior UDRP proceedings against a respondent is sufficient to find a pattern of bad faith registration indicating bad faith under Policy ¶ 4(b)(ii). See, e.g., Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, as in Westcoast Contempo Fashions Ltd., supra, there are numerous UDRP proceedings against Respondent ordering that various domain names be transferred from Respondent to other complainants. Accordingly, the Panel holds that Respondent has demonstrated bad faith through a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant further alleges that Respondent’s advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant. See Complainant’s Exhibit H (providing a screenshot of the website resolving from the disputed domain name). However, the Panel notes that although Complainant has alleged the presence of competing hyperlinks, it is not clear on the face of the screenshot provided by Complainant that the hyperlinks displayed on the at-issue website are to products and services that directly compete with Complainant’s steak products and services. See Complainant’s Exhibit H (providing a screenshot of the website resolving from the <omahoasteaks.com> domain name, which displays a hyperlink to Complainant’s own website as well as hyperlinks to websites unrelated to Complainant’s steak products such as websites for flights, foreign exchange programs, and legal and insurance services). Complainant contends that the displayed hyperlinks divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), a previous panel found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a parking website which provided click through revenue to the respondent and which displayed links to products and services that directly competed with the complainant’s business. hold that this constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent’s registration and use of the disputed domain names constitute attraction for commercial gain, which evidences bad faith under Policy ¶ 4(b)(iv). Specifically, Complainant alleges that Respondent’s use of the disputed domain name takes advantage of Complainant’s OMAHASTEAKS.COM mark to divert Internet users to websites that promote hyperlinks to websites of unrelated third parties. See Complainant’s Exhibit H (providing a screenshot of the website resolving from the <omahoasteaks.com> domain name, which displays hyperlinks to websites unrelated to Complainant’s steak products such as websites for flights, foreign exchange programs, and legal and insurance services). Complainant suggests that Respondent receives click-through fees—a commercial benefit—in exchange for its display of these hyperlinks. Previous panels have held that the use of a confusingly similar domain name to promote hyperlinks unrelated to a complainant establishes bad faith pursuant to Policy ¶ 4(b)(iv). See, e.g. Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Moreover, previous panels have found that a respondent’s use of a disputed domain name to promote unrelated hyperlinks allows a panel to infer that the respondent is commercially gaining from the disputed domain name in the form of click-through fees. Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). Because Complainant has submitted evidence that Respondent has used the website resolving from the disputed domain name to promote unrelated hyperlinks, the Panel determines that Respondent has engaged in attraction for commercial gain which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent’s registration of the <omahoasteaks.com> domain name constitutes typosquatting because the domain name differs from Complainant’s OMAHASTEAKS.COM mark by just one character. The Panel notes that previous panels have held that the practice of typosquatting itself is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See, e.g., Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).The Panel agrees that Respondent has engaged in typosquatting and holds that such typosquatting supports a finding of registration and use of the <omahoasteaks.com> domain name in bad faith pursuant to 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 <omahoasteaks.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 28, 2013
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