national arbitration forum

 

DECISION

 

ABC Liquors, Inc. v. NA Rugking.com

Claim Number: FA1307001510194

 

PARTIES

Complainant is ABC Liquors, Inc. (“Complainant”), represented by Ava K. Doppelt of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Florida, USA.  Respondent is NA Rugking.com (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abcliquor.com>, registered with eNom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.

 

On July 18, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <abcliquor.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@abcliquor.com.  Also on July 25, 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 22, 2103, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <abcliquor.com> domain name is confusingly similar to Complainant’s ABC LIQUOR mark.

 

2.    Respondent does not have any rights or legitimate interests in the <abcliquor.com> domain name.

 

3.    Respondent registered and uses the <abcliquor.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of the active United States Patent and Trademark Office (“USPTO”) registration for the ABC LIQUOR & Design mark (Reg. No. 1,698,144 registered Jun. 30, 1992) for retail liquor store and cocktail lounge services.

 

Respondent registered the <abcliquor.com> domain name on June 2, 1999, and uses it to resolve to a website displaying links and advertisements for flooring-related goods and services.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the ABC LIQUOR mark pursuant to Policy ¶ 4(a)(i) through its USPTO registration.  Previous panels have held that the registration of a mark with a federal trademark authority is evidence of having established rights in a mark.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

Respondent’s <abcliquor.com> domain name wholly incorporates Complainant’s registered mark, and merely adds a generic top-level domain (“gTLD”) to the mark, irrelevant to a determination of confusing similarity.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  Thus, the Panel finds that the <abcliquor.com> domain name is identical to Complainant’s ABC LIQUOR mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 argues that Respondent is in the business of offering retail flooring-related goods and services, and does not use the ABC LIQUOR mark in connection with its business.  The WHOIS record for the <abcliquor.com> domain name lists “NA Rugking.com” as the domain name registrant.  In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel determined that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record.  Accordingly, the Panel finds that Respondent not commonly known by the <abcliquor.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant next alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use, as it resolves to a website displaying links and advertisements for flooring-related goods and services.  Panels have previously found that the display of links to unrelated goods and services is not a use protected under Policy ¶¶ 4(c)(i) and 4(c)(iii).  See 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).  Therefore, the Panel finds that Respondent’s use of the <abcliquor.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant provides evidence to the Panel that, prior to the initiation of this dispute, the <abcliquor.com> domain name resolved to a website displaying links to competing services, under headings such as “Wines,” “Liquor,” and “Whiskey.”  In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel found that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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).  Accordingly, the Panel finds that Respondent’s prior use of the <abcliquor.com> domain name also was not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

 

Respondent registered and used the <abcliquor.com> domain name to advertise products and services that compete with those offered by Complainant, directing customers away from Complainant’s website to Respondent’s own website.  In David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), the panel held that the display of advertisements for competing products and services equated to a bad faith disruption of the complainant’s business.  The Panel finds that Respondent’s previous use of the <abcliquor.com> domain name, to display advertisements to competing alcoholic beverage sales, constitutes bad faith in accordance with Policy ¶ 4(b)(iii).

 

Respondent’s current use of the <abcliquor.com> domain name to display links to flooring-related services also attempts to take advantage of Complainant’s mark, for Respondent’s profit.  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).  The Panel similarly finds that Respondent’s registration and current use of the <abcliquor.com> domain name is further evidence of bad faith according to Policy ¶ 4(b)(iv).

 

Complainant also alleges that Respondent was or should have been aware of Complainant and its registered trademark at the time Respondent registered the <abcliquor.com> domain name because Complainant has been using the mark in connection with its business for over 50 years.  The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <abcliquor.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  September 1, 2013

 

 

 

 

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