VDF FutureCeuticals, Inc. v. Barbara Camisa
Claim Number: FA1004001322095
Complainant is VDF FutureCeuticals, Inc. (“Complainant”), represented by Stephen
R. Baird, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <coffeeberry.com>, registered with eNom.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 29, 2010.
On April 30, 2010, eNom confirmed by e-mail to the National Arbitration Forum that the <coffeeberry.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 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@coffeeberry.com. Also on May 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 June 1, 2010 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 makes the following assertions:
Complainant holds multiple
trademark registrations for its COFFEEBERRY mark with the United States Patent
and Trademark Office (“USPTO”) (including Reg. No. 3,165,945, filed October 30,
2003; issued October 31, 2006) in connection with its marketing of a dietary
supplement.
Respondent registered the
disputed domain name on February 11, 2004.
The disputed domain name resolves to a website displaying click-through links to Complainant’s products and the products of Complainant’s competitors in the dietary supplement industry.
Respondent’s <coffeeberry.com> domain name is identical to Complainant’s COFFEEBERRY mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <coffeeberry.com> domain name.
Respondent registered and uses the <coffeeberry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its COFFEEBERRY mark with the USPTO is sufficient evidence of its 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).
See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The relevant date of
Complainant’s rights in the COFFEEBERRY mark is the date the trademark
registration was filed with the USPTO. Therefore
Complainant’s rights in the mark date back to October 30, 2003, before Respondent’s
registration of the disputed domain name on February 11, 2004. See Hershey
Respondent’s <coffeeberry.com> disputed domain name is identical to Complainant’s COFFEEBERRY mark. The domain name merely adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The addition of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) and therefore is insufficient to distinguish a domain name from a mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to a complainant’s ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that a respondent’s <treeforms.com> domain name is identical to a complainant’s TREEFORMS mark).
Therefore, the Panel finds that Respondent’s <coffeeberry.com> mark is identical to
Complainant’s COFFEEBERRY mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <coffeeberry.com> domain name. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case under this head of the Complaint. Once that initial showing is established, Respondent has the burden to prove that it has rights to or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”
Complainant has established a prima facie case on the point of rights and interests, and Respondent has not submitted a Response in these proceedings. We may infer from Respondent’s failure to respond that Respondent does not have rights to or legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS information for the contested domain name lists the registrant only as “Barbara Camisa,” which does not resemble the contested domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain).
We also note that there is no dispute as to Complainant’s
allegation that Respondent’s domain name resolves
to a website displaying click-through links to Complainant’s products and the products
of Complainant’s competitors in the dietary supplement industry. From the circumstances here presented, we may
presume that Respondent receives income, in the form of click-through or
similar fees, for each visit by Internet users to the links featured on the
resooving website. Respondent’s use of
the disputed domain name for this purpose is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by redirecting Internet users to a
commercial search engine website with links to multiple websites that may be of
interest to a complainant’s customers, and presumably earning “click-through
fees” in the process); see also Jerry
Damson, Inc. v.
The Panel thus finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent is using the disputed domain name to redirect
Internet users who seek to purchase Complainant’s products to its resolving
website where it displays links to the products of both Complainant and
Complainant’s competitors. Internet
users may thus purchase products from Complainant’s competitors rather than
from Complainant. Respondent’s use of
the disputed domain name in this manner constitutes disruption of Complainant’s
business and is therefore evidence of bad faith registration and use of the
contested domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a contested domain name to attract
Internet users to a directory website containing links to the websites of a
complainant’s commercial competitors represents bad faith registration and use of
the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use of a disputed domain name pursuant to Policy ¶
4(b)(iii) where a respondent used the domain name to operate a commercial
search engine with links to a complainant’s competitors).
Respondent’s domain name resolves to a website displaying links to products of Complainant and Complainant’s competitors in the dietary supplement market. Respondent presumably benefits from the receipt of click-through fees generated by the links displayed on the resolving website. Respondent’s use of the disputed domain name as alleged is evidence of bad faith regsitration and use of the domain pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iv) by using them to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites that offered services similar to those offered by a complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <coffeeberry.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 8, 2010
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