Omaha Steaks International, Inc. v. Venkateshwara Distributor Private Limited.
Claim Number: FA1401001541391
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ohmahasteaks.com>, registered with Tirupati Domains and Hosting Private Limited.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 29, 2014; the National Arbitration Forum received payment January 28, 2014.
On January 31, 2014, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <ohmahasteaks.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014, 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@ohmahasteaks.com. Also on January 31, 2014, 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 February 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant has been in business since 1917. Complainant manufactures, markets, and distributes a wide variety of premium steaks, food seasonings, cookbooks, and other gourmet foods. Complainant has some eighty locations in twenty-seven states, and Complainant operates its own website located at <omahasteaks.com>.
b) Complainant has rights in the OMAHA STEAKS mark, used in connection with retail mail order and retail food store services. Complainant owns registrations for the OMAHA STEAKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458,802 registered Sept. 22, 1987).
c) Respondent’s <ohmahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark. The disputed domain name only differs from Complainant’s mark by a single character, and the generic top-level domain (“gTLD”) is of no relevance in making this comparison.
d) Respondent has no rights or legitimate interests in the <ohmahasteaks.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its OMAHA STEAKS mark in any way.
b. Respondent is using the <ohmahasteaks.com> domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant. See Complainant’s Exhibit H.
e) Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith.
a. Respondent has listed the disputed domain name for sale via the WHOIS record. See Complainant’s Exhibit I.
b. Respondent is a serial cybersquatter who has been involved in numerous UDRP proceedings.
c. Respondent is disrupting Complainant’s business by diverting potential customers to Respondent’s website that features competing third-party links. See Complainant’s Exhibit H.
d. Respondent is attracting and misleading Internet users for Respondent’s own commercial gain by misdirecting users to Respondent’s website that features click-through links. See Complainant’s Exhibit H. Complainant presumes that Respondent obtains revenue from these links.
e. Respondent’s conduct constitutes typosquatting.
f) Respondent registered the <ohmahasteaks.com> domain name April 22, 2000.
Respondent did not submit Response in this proceeding.
Complainant established that it has rights to and legitimate interests in the disputed domain containing Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no such rights or legitimate interests.
Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar
Complainant contends it has rights in the OMAHA STEAKS mark, used in connection with retail mail order and food store services. Complainant notes it owns registrations for the OMAHA STEAKS mark with the USPTO (e.g., Reg. No. 1,458,802 registered Sept. 22, 1987). The Panel observes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, a complainant need not own a registration in a respondent’s country of operation. It is sufficient that a complainant own a registration in a different country. 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). Therefore, the Panel finds that Complainant has rights in the OMAHA STEAKS mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns valid trademark registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <ohmahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark. Complainant states that the disputed domain name differs from Complainant’s mark by a single character, and that the gTLD is of no relevance in making this comparison. The Panel notes that the disputed domain name inserts the letter “h” into the word “Omaha” in Complainant’s mark, and the disputed domain name also does not contain the space that exists between the two words in Complainant’s mark. First, the Panel finds that the addition of a single letter to a complainant’s mark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Next, the Panel finds that the elimination of a space between words in a trademark and the addition of a gTLD does not distinguish a disputed domain from a trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <ohmahasteaks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
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.”).
Complainant contends Respondent has no rights or legitimate interests in the <ohmahasteaks.com> domain name. Complainant claims Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its OMAHA STEAKS mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Venkateshwara Distributor Private Limited” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the OMAHA STEAKS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <ohmahasteaks.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <ohmahasteaks.com> domain name to redirect Internet users to a website featuring generic links to third-party websites that compete directly with Complainant. The Panel notes that links on the resolving website include “Omaha Steaks,” “Kansas City Steaks,” and “Mail Order Steaks.” See Complainant’s Exhibit H. Past panels have found that using a confusingly similar domain name to host a website displaying links that seek to compete with Complainant does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making 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) because the Respondent is using the <ohmahasteaks.com> domain name to redirect Internet users to a website featuring generic links to third-party websites that compete directly with Complainant.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith. Complainant contends that Respondent listed the disputed domain name for sale via the WHOIS record. See Complainant’s Exhibit I. Past panels have found that a general offer for sale of a disputed domain name provides a basis for a finding of bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent made the disputed domain name available for sale.
Complainant asserts that Respondent is a serial cybersquatter who has been involved in numerous UDRP proceedings. The Panel notes that a search for Respondent on the National Arbitration Forum’s decision data base renders nineteen cases involving Respondent, all of which resulted in an ordered transfer of the disputed domain names. See e.g., Gap, Inc v. Venkateshwara Distributor Private Limited, FA 1507132 (Nat. Arb. Forum Aug. 28, 2013); LF, LLC v. Venkateshwara Distributor Private Limited, FA 1428517 (Nat. Arb. Forum March 22, 2013. Past panels have found that such a pattern of conduct permits a finding of bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith under Policy ¶ 4(b)(ii) because Respondent has been involved in numerous past UDRP proceedings that resulted in the transfer of Respondent’s domain names.
Complainant argues that Respondent is disrupting Complainant’s business by diverting potential customers to Respondent’s website that features competing third-party links. See Complainant’s Exhibit H. In previous cases, panels have held that using a confusingly similar domain name to host competing third party links demonstrates a bad faith disruption 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent is operating a website that features third-party links that compete with Complainant.
Complainant claims Respondent is attracting and misleading Internet users for Respondent’s own commercial gain by misdirecting users to Respondent’s website that features click-through links. See Complainant’s Exhibit H. Complainant presumes that Respondent obtains revenue from these links. Past panels have found that using a confusingly similar domain name to host pay-per-click links for a respondent’s own commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and is using the <ohmahasteaks.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is misdirecting users to Respondent’s website that features click-through links.
Complainant argues that Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the disputed domain name differs from Complainant’s mark by only a single character. Further, past panels have found that typosquatting provides further evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent is typosquatting, conduct that evidences bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ohmahasteaks.com> domain name BE TRANSFERRED from respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Date: March 7, 2014.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page