Sensient Technologies Corporation v. Vitali Kuhharev
Claim Number: FA1006001327471
Complainant is Sensient
Technologies Corporation (“Complainant”), represented by Lori S. Meddings, of Michael Best &
Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sensientflawors.com>, registered with GoDaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2010.
On June 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sensientflawors.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 June 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@sensientflawors.com. Also on June 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 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
1. Respondent’s <sensientflawors.com> domain name is confusingly similar to Complainant’s SENSIENT mark.
2. Respondent does not have any rights or legitimate interests in the <sensientflawors.com> domain name.
3. Respondent registered and used the <sensientflawors.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sensient Technologies Corporation, holds multiple trademark registrations for its SENSIENT mark with the United States Patent and Trademark Office (“USPTO”):
SENSIENT (design) 2,921,015 issued January 25, 2005
SENSIENT (design) 2,923,579 issued February 1, 2005
SENSIENT 2,948,282 issued May 10, 2005
SENSIENT 2,967,358 issued July 12, 2005
SENSIENT 2,976,513 issued July 26, 2005
Complainant is a global company with operations in more than 30 countries and is a provider of flavors, fragrances, and colors used to make a diverse variety of foods and beverages, pharmaceuticals, cosmetics, home and personal care products, specialty printing and imaging products, computer imaging, and industrial colors. Complainant owns and uses the <sensientflavors.com> domain name to provide information for Complainant’s industrial customers and investors.
Respondent, Vitali Kuhharev, registered the disputed domain name on April 20, 2010. The disputed domain name resolves to an inactive website.
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 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.”).
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.
Complainant asserts rights in its SENSIENT mark based on its holding of multiple trademark registrations for the mark with the USPTO:
SENSIENT (design) 2,921,015 issued January 25, 2005
SENSIENT (design) 2,923,579 issued February 1, 2005
SENSIENT 2,948,282 issued May 10, 2005
SENSIENT 2,967,358 issued July 12, 2005
SENSIENT 2,976,513 issued July 26, 2005
The Panel finds that Complainant’s registrations of the SENSIENT mark with the USPTO is conclusive evidence of 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, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel further finds that Complainant’s USPTO registrations are sufficient even if Respondent does not reside or operate within that jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <sensientflawors.com>
domain name is confusingly similar
to Complainant’s SENSIENT mark.
Complainant contends that Respondent merely adds a misspelled version of
the descriptive term “flavors” and the generic top-level domain (“gTLD”) “.com”
to the entirety of Complainant’s mark.
The Panel finds that the addition of a descriptive term to Complainant’s
mark creates a confusing similarity for the purposes of Policy ¶ 4(a)(i). See
Am. Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see also Intelius, Inc. v. Hyn, FA 703175
(Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to
be confusingly similar to the complainant’s INTELIUS mark because the domain
name differed from the mark by one letter and was visually similar); see also Whitney Nat’l Bank v. Easynet Ltd, FA
944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an
obvious relationship to Complainant’s business and a gTLD renders the disputed
domain name confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i).”). The Panel also finds that
the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i)
analysis. See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i)
analysis); see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has established a prima facie case, as the Panel determines that Complainant has done in this instance, the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel notes that Respondent has failed to respond to the Complaint and the Panel finds that Respondent’s silence is tantamount to acquiescence with Complainant’s allegations that Respondent lacks rights and legitimate interests. 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.”); see also 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.”). Nevertheless, in order to make a complete determination regarding Respondent’s rights and legitimate interests, the Panel will examine the record in light of the factors specified in Policy ¶ 4(a)(ii).
The WHOIS information for the disputed domain name lists the registrant as “Vitali Kuhharev” which Complainant alleges does not identify Respondent as the disputed domain name. Additionally, Complainant indicates that Respondent does not own any trademark registrations for the domain name or any portion thereof and Complainant has not consented to Respondent’s use of the disputed domain name. Based on the WHOIS information and the lack of evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent has failed to make an active use of the disputed domain name. The Panel finds that Respondent’s failure to make an active use of the disputed domain name 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a) (iii) analysis and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s disputed domain name fails to resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith.
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sensientflawors.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 9, 2010
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