Omaha Steaks International, Inc. v. Center for Ban on Drugs
Claim Number: FA1307001509287
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Center for Ban on Drugs (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahsteaks.com>, registered with DNC HOLDINGS, INC.
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 Honorable Charles K. McCotter, Jr. (Ret.) 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, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <omahsteaks.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, INC. 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 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@omahsteaks.com. Also on July 15, 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
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 is a recalcitrant, serial cybersquatter.
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 in bad faith by using 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.
Complainant, Omaha Steaks International, Inc., manufactures, markets, and distributes a wide variety of premium steaks, food seasonings, cookbooks, and other gourmet foods. 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). Complainant has used the OMAHA STEAKS mark continuously since 1968 to designate its products and services.
Respondent, Center for Ban on Drugs, registered the disputed domain name on April 16, 2001. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
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’s registration of the OMAHA STEAKS with the USPTO demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that the <omahsteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark because it differs by only a single character from Complainant’s mark. Respondent removes the letter “a” in Complainant’s OMAHA STEAKS mark which does not negate a finding of confusing similarity under 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”). Respondent removes the space in Complainant’s OMAHA STEAKS mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. Respondent’s omission of a space and inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. 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).”). The Panel finds that the <omahsteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark.
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).
Complainant asserts that Respondent has not been commonly known by the disputed domain name. The WHOIS record lists “Center for Ban on Drugs” as the registrant of the <omahsteaks.com> domain name. Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Respondent is not sponsored by or affiliated with Complainant. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <omahsteaks.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues 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. Respondent’s <omahsteaks.com> domain name resolves to a hyperlink directory featuring competing links titled “Omaha Steaks Deals,” “Omaha Steaks,” “Father’s Day Gifts,” and more. Prior panels have held that a respondent’s use of a domain name to provide competing hyperlinks is not a bona fide offering of goods or services or a 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. This Panel finds that Respondent does not use the <omahsteaks.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.
Complainant claims that Respondent is a recalcitrant, serial cybersquatter. Complainant argues that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See THE GAP, INC. v. Center for Ban on Drugs, FA 1445907 (Nat. Arb. Forum July 5, 2012); Choice Hotels Int’l, Inc. v. Center for Ban on Drugs, FA 1358951 (Nat. Arb. Forum Dec. 21, 2010); Vanguard Trademark Holdings USA LLC v. Center for Ban on Drugs, FA 1333299 (Nat. Arb. Forum Aug. 15, 2010). The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and resulting in a transfer to the mark’s holder evidences bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant
asserts that Respondent’s advertised pay-per-click links displayed on the
resolving websites promotes products that compete with Complainant. Complainant
alleges that these links divert potential customers away from Complainant to
third-party websites, thus disrupting Complainant’s business. Accordingly, the
Panel finds that Respondent’s use of the <omahsteaks.com>
domain name disrupts Complainant’s business pursuant to 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).”).
Complainant argues that Respondent has registered and used the <omahsteaks.com> domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit. Respondent’s <omahsteaks.com> domain name provides links to Complainant’s competitors. Complainant claims that Respondent’s setting up of a “click-through” website for which it likely receives revenue for each misdirected Internet user demonstrates Respondent’s bad faith. The Panel concludes that Respondent’s use of the disputed domain name to attract Internet users to its own website for commercial gain shows bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Typosquatting evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003), Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omahsteaks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 23. 2013
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