Omaha Steaks International, Inc. v. Direct Privacy LTD
Claim Number: FA1307001509286
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Direct Privacy LTD (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwomahasteaks.com>, registered with DYNADOT, LLC.
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.
James A. Carmody, Esq., 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 11, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwomahasteaks.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the names. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@wwwomahasteaks.com. Also on July 12, 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 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <www.omahasteaks.com> domain name, the domain name at issue, is confusingly similar to Complainant’s OMAHA STEAKS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the OMAHA STEAKS mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,458,802, registered September 22, 1987). Complainant was founded in 1917, and is now one of America’s largest marketers of beef. Complainant uses the mark for retail mail-order and retail food store services in the field of gourmet food products, kitchen apparel and utensils. The OMAHA STEAKS mark enjoys national recognition with over 80 store locations in 27 states.
The <wwwomahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark, as the domain merely adds the prefix “www” before Complainant’s mark, as well as the generic top-level domain (“gTLD”) “.com.” Respondent has not been commonly known by the disputed domain as demonstrated by the WHOIS record, which identifies “Direct Privacy LTD” as the registrant of the disputed domain name. Further, Complainant has not authorized Respondent’s use of the mark. Respondent uses the 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. Respondent presumably receives pay-per-click revenue from the linked websites. As a result, Respondent diverts potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Respondent registered and has used the disputed domain name in bad faith by using the name to attract and mislead consumers for Respondent’s own profit. Respondent’s bad faith is further demonstrated by Respondent’s actual knowledge of Complainant’s rights in the mark and Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Respondent registered the <wwwomahasteaks.com> domain name on March 4, 2009.
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 own the OMAHA STEAKS mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,458,802, registered September 22, 1987). Respondent appears to reside in the Cayman Islands, however, Complainant’s USPTO registration establishes its rights in the OMAHA STEAKS mark pursuant to Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <wwwomahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark, as the domain merely adds the prefix “www” in front of Complainant’s mark, and adds the gTLD “.com”. The omission of the period following the “www” prefix does not sufficiently distinguish the domain name from the mark. See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark). Further, the affixation of a gTLD, such as “.com”, is irrelevant for purposes of a Policy ¶4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The disputed domain name fails to include the spacing between the words of the mark, and previous panels have determined that omitting a space can nonetheless lead to confusing similarity between a mark and a disputed domain name. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the <wwwomahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark pursuant to Policy ¶4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by the disputed domain as demonstrated by the WHOIS record, which identifies “Direct Privacy LTD” as the registrant of the disputed domain name. Further, Complainant has not authorized Respondent’s use of the mark. Respondent did not submit a Response and therefore has not refuted Complainant’s contentions. The evidence on record, including the WHOIS information, and Complainant’s contention that Respondent is not authorized to use Complainant’s OMAHA STEAKS mark, supports a finding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Respondent uses the 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. Presumably, Respondent receives pay-per-click revenue from the linked websites. The Complainant includes a screenshot of the resolving page which displays hyperlinks to various websites, both related and unrelated to Complainant’s business. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use, where the respondent used the resolving page to display links that are in competition with the complainant. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. This Panel finds that Respondent is not using the <wwwomahasteaks.com> domain name to provide 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), as demonstrated by Respondent’s use of the domain name to host a website displaying nothing more than hyperlinks leading to other businesses, some of which compete with Complainant’s business.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent uses the resolving page to promote products that compete with Complainant. As a result, Respondent diverts potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business. This disruption provides evidence of Respondent’s bad faith. See, In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), were the Panel found that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. Complainant’s evidence, showing a screenshot of the resolving website displaying hyperlinks to websites offering competing goods to those offered by Complainant supports a finding of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Respondent registered and has used the disputed domain name in bad faith by attempting to attract and mislead consumers for Respondent’s own profit. Respondent uses the OMAHA STEAKS mark in conjunction with links to services and products similar to those offered by Complainant, in order to take advantage of the goodwill associated with Complainant’s mark. Presumably, Respondent receives click through fees from the linked websites. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Respondent appears to be utilizing the same tactic. Therefore, as a result of Respondent’s use of a confusingly similar domain name to Complainant’s mark in order to attract Internet traffic, and thereby generate a commercial profit, the Panel finds that Respondent registered and uses the <wwwomahasteaks.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s bad faith is further demonstrated by Respondent’s actual knowledge of Complainant’s rights in the mark. Complainant notes that the resolving page displays Complainant’s properly spelled mark at the top of the page. The properly spelled mark reveals Respondent’s knowledge of Complainant’s mark, and Respondent’s intent to use the misspelling for its own benefit. Given the presence of the OMAHA STEAKS mark, and the content at the resolving website, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark, and therefore, finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Further, Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). The Panel finds clear evidence of Respondent’s bad faith registration under Policy ¶ 4(a)(iii), as it appears Respondent registered the <wwwomahasteaks.com> domain name with the intention of diverting Internet users who inadvertently misspell Complainant’s mark, thereby leading them away from their intended destination.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwomahasteaks.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 8, 2013
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