SF Investments, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1404001552266
Complainant is SF Investments, Inc. (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smithfieldpacking.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2014; the National Arbitration Forum received payment on April 2, 2014.
On April 3, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <smithfieldpacking.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@smithfieldpacking.com. Also on April 8, 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 April 30, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <smithfieldpacking.com> domain name is confusingly similar to Complainant’s SMITHFIELD mark.
2. Respondent does not have any rights or legitimate interests in the <smithfieldpacking.com> domain name.
3. Respondent registered and uses the <smithfieldpacking.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The <smithfieldpacking.com> domain name was registered initially in 1996, and by Respondent in August 2012, and it is used to resolve to a website providing links and advertising for companies competing with Complainant.
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.”).
The Panel finds that Complainant has rights in the SMITHFIELD mark under Policy ¶ 4(a)(i) through its registrations with the USPTO. Previous panels have found that providing evidence of a registration with a recognized trademark authority is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant need not register a mark in the location of Respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <smithfieldpacking.com> domain name was registered on August 28, 1996, which is prior to Complainant’s trademark registration filing dates of October 22, 2002 and November 27, 2001. Complainant alleges, but provides no evidence to support, that Complainant was the previous registrant of the domain name and that Respondent obtained the domain name when Complainant inadvertently forgot to pay its registration fees. Complainant also contends that it has attained common law rights based on its use since 1936. Complainant states that Smithfield Foods’ licensees have spent substantial sums advertising its goods under the SMITHFIELD mark. Complainant asserts that in 2013 its family of sub-brands exceeded $13 billion in annual sales, rendering Complainant the largest producer of pork products in the world. The Panel notes that Complainant’s trademark registrations demonstrate a first use date of 1936. Panels have frequently found that a complainant can establish common law rights in a mark by providing evidence that Complainant has established a secondary meaning in the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Hiatt v. personal fan & official site builders: we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established . . . .”); see also Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel finds that Complainant has established common law rights in the SMITHFIELD mark through continuous use since 1936, and through its prominence in global pork production.
Respondent’s <smithfieldpacking.com> domain name adds the gTLD “.com” and the generic term “packing” to Complainant’s SMITHFIELD mark, which relates to Complainant’s business. These changes do not distinguish the disputed domain name from Complainant’s mark. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Thus, the Panel finds that Respondent’s <smithfieldpacking.com> domain name is confusingly similar to Complainant’s SMITHFIELD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by the <smithfieldpacking.com> domain name under Policy ¶ 4(c)(ii). Complainant states that Respondent is not a licensee of Complainant, nor has Complainant authorized Respondent to use its SMITHFIELD mark. Panels have frequently found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record indicating that respondent is commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Thus, the Panel finds that Respondent has no rights or legitimate interests in the <smithfieldpacking.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent is using the disputed domain name to divert Internet traffic away from Complainant’s legitimate website in order to profit from the links displayed on the resolving website. The Panel notes that the disputed domain name resolves to a website featuring links including, “Chrome River Expense,” “Construction Management,” “Jobs Hiring,” “Job Openings,” “Pork Recopies,” “Cooking Tips,” “and Stuffed Pork Chops.” Panels have frequently found that use of a confusingly similar domain name for a website displaying links to third-party companies—thereby generating commercial revenue—does not indicate rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has no rights or legitimate interests in the <smithfieldpacking.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <smithfieldpacking.com> domain name resolves to a website providing links and advertising for companies competing with Complainant’s services for commercial gain. Complainant states that attracting internet users in this fashion confuses them as to Complainant’s association with the disputed domain name and content on the resolving website. The Panel notes that many panels have agreed, and found this use of a domain name to indicate bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the <smithfieldpacking.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent was well aware of Complainant’s famous mark and Complainant’s rights in its mark. Complainant argues that it is inconceivable that Respondent could have registered the <smithfieldpacking.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Due to the prominence of Complainant’s mark and the competing use of the disputed domain name, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Commc’ns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied 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 <smithfieldpacking.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 5, 2014
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