Purfoods, LLC v. Harveen Kaur / Suffolk Systems Consulting Inc.
Claim Number: FA1308001517387
Complainant is Purfoods, LLC (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is Harveen Kaur / Suffolk Systems Consulting Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <momsmeal.com>, registered with 1&1 Internet AG.
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 August 30, 2013; the National Arbitration Forum received payment on August 30, 2013.
On September 2, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <momsmeal.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 September 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@momsmeal.com. Also on September 3, 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.
A timely Response was received and determined to be complete on September 23, 2013.
On September 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Complainant, Purfoods, LLC, has been using the trademark MOM’S MEALS in conjunction with its food preparation and home delivery services since at least as early as 1999.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MOM’S MEALS mark (Reg. No. 2,430,824, registered February 27, 2001).
iii. Complainant’s IT director registered the <momsmeals.com> domain name on August 9, 2002.
iv. The domain name <momsmeal.com> is almost identical to Complainant’s federally-registered trademark MOM’S MEALS as it adds only the generic top-level domain (“gTLD”) “.com” and removes only the “s” from the end of “meals.”
i. Respondent has no rights or legitimate interests in respect of the domain name.
ii. Respondent is not commonly known as MOM’S MEAL or MOM’S MEALS.
iii. The website to which the domain name resolves is <plastichali.com>, which states the owner is a “direct supplier of Plastic Disposables for Indian, Gujarati, Pakistani, and Asian Parties.” Such use is not affiliated in any way with Complainant.
i. The domain name is being used in bad faith.
ii. Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
iii. The disputed domain name is merely a typosquatted version of Complainant’s MOM’S MEALS mark.
Respondent made the following contentions.
1. Policy ¶ 4(a)(i)
i. Complainant’s MOM’S MEALS mark is not exactly the same as <momsmeal.com>.
2. Policy ¶ 4(a)(ii)
ii. Respondent alleges that it can decide to do whatever it wants with its domain name as long as it is not intentionally trying to misuse of harm somebody else.
iii. Respondent’s main intention in buying this domain name was as a tribute to his mother’s food and to thank mothers who feed their kids until they grow up and leave their mothers’ homes.
3. Policy ¶ 4(a)(iii)
If Respondent was in the business of selling the domain, it would have been actively trying to sell it for the last many years but it did not.
4. Reverse Domain Name Hijacking
Complainant is trying to mislead the National Arbitration Forum in an attempt to reverse hijack the domain name by misusing the UDRP process.
1. Complainant is a United States company operating a business providing food preparation and home delivery services which it has done since at least as early as 1999.
2. Complainant is the owner of a trademark registration with the USPTO for the MOM’S MEALS mark (Reg. No. 2,430,824, registered February 27, 2001).
3. Respondent registered the <momsmeal.com> domain name on September 3, 2007.
4. The domain name resolves to a website at www.plastichali.com, which states the owner is a “direct supplier of Plastic Disposables for Indian, Gujarati, Pakistani, and Asian Parties.”
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.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it has been using the trademark MOM’S MEALS in conjunction with its food preparation and home delivery services since at least as early as 1999. Complainant contends that it is the owner of a trademark registration with the USPTO for the MOM’S MEALS mark (Reg. No. 2,430,824, registered February 27, 2001). See Complainant’s Exhibit A. The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel determines that Complainant’s registration of the MOM’S MEALS mark with the USPTO sufficiently evidences Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is
identical or confusingly similar to Complainant’s MOM’S MEALS trademark.
Complainant claims that the domain name <momsmeal.com> is almost identical to Complainant’s federally-registered trademark MOM’S MEALS. Complainant alleges that Respondent’s <momsmeal.com> domain name adds the gTLD “.com.” The Panel observes that Respondent also removes the space in Complainant’s MOM’S MEALS mark. The Panel finds that Respondent’s inclusion of a gTLD and removal of a space in the disputed domain name is inconsequential 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).”). Complainant argues that Respondent also removes the “s” from the end of “meals” in Complainant’s MOM’S MEALS mark. The Panel holds that Respondent’s omission of a letter from Complainant’s mark in the disputed domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Lastly, the Panel notes that Respondent removes the apostrophe from Complainant’s MOM’S MEALS mark. The Panel determines that Respondent’s removal of an apostrophe from Complainant’s mark for its disputed domain name does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).
In response, Respondent submits that Complainant’s trademark is not exactly the same as the <momsmeal.com> domain name. However, it is not necessary that Complainant proves that the disputed domain name is exactly the same as the trademark, as the additional test that enables Complainant to succeed on the first element is if the domain name is confusingly similar to the trademark. Complainant has established that element.
Respondent also submits that even if the trademark and the domain name were exactly the same, it does not give owner of the trademark the right to hijack somebody else’s domain name. However, there is no evidence that Complainant has any such intention and in any event that issue is to be left until the three essential elements set out above are examined.
Accordingly, the Panel concludes that Respondent’s <momsmeal.com> domain name is confusingly similar to Complainant’s MOM’S MEALS mark under Policy ¶ 4(a)(i).
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 trademark and to use it in its domain name after making the minor changes referred to above, thus implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant concerned with Complainant’s products;
(b) Respondent has then caused the domain name to divert Internet users to <plastichali.com>, which states the owner is a “direct supplier of Plastic Disposables for Indian, Gujarati, Pakistani, and Asian Parties”, a use which is not affiliated in any way with Complainant;
(c) Complainant then contends that Respondent is not commonly known as MOM’S MEAL or MOM’S MEALS. Complainant alleges that the WHOIS information does not indicate in any manner that Respondent is commonly known by the domain name. The Panel notes that the WHOIS information identifies “Harveen Kaur / Suffolk Systems Consulting Inc.” as the registrant of the <momsmeal.com> domain name. See Complainant’s Exhibit F. Complainant contends that it has not given Respondent permission to use its MOM’S MEALS mark in any way. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel concluded 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. Consequently, the Panel determines that Respondent is not commonly known by the <momsmeal.com> domain name pursuant to Policy ¶ 4(c)(ii);
(d) As noted above, Complainant argues that the website to which the <momsmeal.com> domain name resolves is <plastichali.com>, which states the owner is a “direct supplier of Plastic Disposables for Indian, Gujarati, Pakistani, and Asian Parties,” and that such use is not affiliated in any way with Complainant. See Complainant’s Exhibit G. The Panel notes that Respondent’s domain name resolves to an unrelated website which appears to sell “compartment plastic plates.” Id. Prior panels have determined that a respondent’s unrelated use of the website resolving from a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”). Therefore, the Panel finds that Respondent’s use of the <momsmeal.com> domain name to sell plastic disposable plates 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.
All of these matters go to make out the prima facie case against Respondent. It is then a matter of examining Respondent’s case to see if it has rebutted the prima facie case against it. The Panel finds that Respondent has not rebutted the prima facie case. That is so for the following reasons.
Respondent’s case is essentially that it acquired the domain name as a tribute to
his mother’s food and as thanks to all mothers for providing meals for their
children. That of course may well be the case, but it is not a reason that justifies
doing so by using Complainant’s trademark. Under this heading Respondent is
required to show a right or legitimate interest in the domain name and having
regard to all that Respondent has submitted, the Panel is unable to find that there
is such a right or legitimate interest.
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 the <momsmeal.com> domain name is being used in bad faith. Complainant claims that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant alleges that it contacted Respondent on August 19, 2013 asking for the transfer of the domain name to Complainant for the reasonable price of $1,000. Complainant contends that Respondent responded on August 22, 2013 stating that $11,000 was its price, stating “We have offers too from companies that do similar business as yours.” See Complainant’s Exhibit B. Respondent contends that the passage of time shows that it did not intend to try to sell the domain name to Complainant and notes that the original approach came from Complainant. Respondent also submits that it could not have derived a financial benefit from diverting internet users to a site which had nothing to do with Complainant. However, as the Panel finds that Respondent’s offer to sell the disputed domain name to Complainant for $11,000 constitutes an offer for sale to Complainant for an amount in excess of out-of-pocket costs, the Panel finds that Respondent has registered and is using the <momsmeal.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Secondly, Complainant argues that the disputed domain name is very nearly identical to Complainant’s trademark, MOM’S MEALS, and constitutes only an obvious misspelling of Complainant’s trademark. The Panel notes that the disputed domain name deviates from the mark only by the deletion of a single letter and an apostrophe as well as the addition of a gTLD. However, the Panel notes that punctuation is impermissible in domain names and top-level domains are required, thus the only substantive change is the deletion of a single letter, which Internet users are very likely to do accidentally, on occasions. Complainant notes that domain names containing misspelled versions of a complainant’s mark have indicated to previous panels a respondent’s bad faith as a result of typosquatting. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). As such, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, 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 Complainant’s trademark in the manner described above and its subsequent use of the disputed domain name, Respondent registered and used it 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 <momsmeal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 26, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page