Omaha Steaks International, Inc. v. Site Admin / Texas Internet
Claim Number: FA1503001610124
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Site Admin / Texas Internet (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahastaks.com>, registered with DNC Holdings, Inc.
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 Forum electronically on March 18, 2015; the Forum received payment on March 18, 2015.
On March 19, 2015, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <omahastaks.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 March 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2015 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@omahastaks.com. Also on March 19, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions.
1. Complainant is a prominent company which manufactures, markets and distributes a wide variety of premium steaks, food seasonings, cookbooks and other gourmet foods.
2. Complainant has registered the OMAHASTEAKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458,802, registered September 22, 1987), which evinces rights in the mark. Complainant uses the mark in connection with its business.
3. Complainant’s products and services can be found online at www.omahasteaks.com.
4. The disputed domain name(s) is nearly identical and confusingly similar to Complainant's OMAHASTEAKS mark.
5. The disputed domain name is a classic example of typosquatting and does not distinguish the domain name from the trademark.
6. Respondent does not have a right or legitimate interest in the disputed domain name because Respondent is not commonly known by the domain name, is not sponsored by or legitimately affiliated with Complainant, Complainant has not given Respondent permission to use Complainant’s mark in a domain name, Respondent has not replied to Complainant’s “Cease and Desist” letter and Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding and Respondent is using the domain name to redirect unsuspecting internet users to a website featuring generic links to third party websites, some of which compete directly with Complainant’s business.
7. The disputed domain name was registered and is being used in bad faith as Respondent is using the domain name’s website in connection with generating revenue as a “click through” website, has registered and used the domain name to attract and mislead consumers for its own profit and promote products that compete with Complainant, has caused the website to display content directly related to Complainant’s business, has caused Complainant’s trademark to be spelled correctly on the website and has engaged in typosquatting. Moreover Respondent is a serial cybersquatter and has apparently falsified and /or adopted incomplete WHOIS information. All of these factors show bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company which manufactures, markets and distributes a wide variety of premium steaks, food seasonings, cookbooks and other gourmet foods.
2. Complainant is the registered owner of the OMAHASTEAKS mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458,802, registered September 22, 1987), which evinces rights in the mark. Complainant uses the mark in connection with its business.
3. Respondent registered the disputed domain name on November 25, 2000. It resolves to a “click through” website which promote products related to Complainant’s business and which compete with Complainant.
DISCUSSION
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 first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the OMAHASTEAKS mark in connection with its business of manufacturing, marketing and distribution of a wide variety of premium steaks, food seasonings, cookbooks and other gourmet foods. Complainant submits that it registered the OMAHASTEAKS mark with the USPTO (e.g., Reg. No. 1,458,802, registered on September 22, 1987), which Complainant contends is a representation of its rights in the mark. The Panel accepts that submission and the evidence on which it is based. Panels have agreed that such registrations with the USPTO and other authorities evidence a complainant’s rights in a mark and the Panel so finds in the present case. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OMAHASTEAKS mark. Complainant submits that Respondent’s <omahastaks.com> domain name is confusingly similar to Complainant’s mark because it incorporates the mark in the domain name, makes one difference only in the spelling of the trademark by omitting the letter “e” and adds the generic top-level domain (“gTLD”) “.com” to the OMAHASTEAKS mark. Panels have found that effecting such an omission of one letter and the addition of a “.com” gTLD to a mark is insufficient to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a) (i). See Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark") and see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.") Thus, the Panel finds that Respondent’s domain name is confusingly similar to the OMAHASTEAKS mark pursuant to 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 OMAHASTEAKS trademark and used it in its domain name, making only the minor spelling alteration to the trademark referred to above;
(b) Complainant submits that the present case is a classic case of typosquatting as the domain name omits one letter of the trademark when being used in the domain name and that this shows Respondent has no right or legitimate interest in the domain name under Policy ¶ 4(a)(ii). The Panel agrees with this submission, a view that has been followed in prior UDRP panel decisions; see
IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”);
(c)Complainant also submits that Respondent is not commonly known by the domain name. In so arguing, Complainant notes that it has never given Respondent any authorization to register the <omahastaks.com> domain name or any variant of the OMAHASTEAKS mark. Additionally, the Panel notes that the relevant WHOIS information merely lists “Site Admin Texas Internet” as registrant of record. See Compl., Exhibit I. As Respondent has failed to file a Response or add any additional evidence for the Panel’s consideration, the Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(d)Complainant then submits that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The Panel agrees with this submission.
(e) Complainant submits that Respondent is not using the disputed domain name for 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 disputed domain name resolves to a website that offers numerous products such as “Omaha Steaks”, “Orders”, “ Gift Baskets”, Gift Card” and “ Wine and Gift Baskets”, many of which likely directly compete with products offered by Complainant under its OMAHASTEAKS mark. See Complainant’s Exhibit H. The Panel notes that it has previously been determined that a respondent’s use of a disputed domain name to sell products that compete with those offered by the complainant is not protected as 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). See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel holds that Respondent’s use of the disputed domain name to offer products that compete with Complainant’s OMAHASTEAKS products is not a use protected under Policy ¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 Respondent’s <omahastaks.com> domain name resolves to a website containing links to competing third-party websites, some of which have already been referred to. See Complainant’s Exhibit H. The Panel finds that Respondent has linked its <omahastaks.com> domain name to a website displaying competing links and the Panel therefore finds bad faith disruption of Complainant’s business, which demonstrates bad faith registration under Policy ¶ 4(b)(iii) as being disruptive of Complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”) and see also. Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As Respondent, after registration of the domain name has used it for this purpose, the conduct just described is also evidence of bad faith use and the Panel so finds.
Secondly, Complainant submits that the facts of this case bring it squarely within the provisions of Policy ¶ 4(b) (iv). The Panel agrees with that submission as it is clear from the evidence that the registration and use of the domain name must have been done with the intention on the part of Respondent to cause confusion and to mislead internet users by promoting products that suggest the internet user has found an official website of Complainant. That is so because the products are similar to those the internet user would expect were being offered by Complainant, especially as the website, unlike the domain name, spells Complainant’s name and trademark correctly. Complainant submits and it is clear from the evidence that Respondent’s <omahastaks.com> website directs consumers to a website featuring links to third-party websites promoting competing products under the guise that they are products of Complainant sold under the OMAHASTEAKS trademark. The Panel observes that Respondent can collect pay-per-click or referral fees through this use of the disputed domain name. As the Panel finds that Respondent has attempted to divert Internet users from Complainant’s website to its own website for commercial gain, the Panel finds that Respondent has demonstrated bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Thirdly, the Panel refers again to the issue of typosquatting in view of the fact that Respondent has omitted one letter from Complainant’s trademark in formulating its domain name. Past panels have found that respondents who take advantage of common typing errors engage in bad faith use and registration 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)).The Panel finds that for this reason the disputed domain name was registered and used in bad faith.
Fourthly, Complainant submits that Respondent is a recalcitrant, serial cybersquatter and that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behaviour. See Compl., Exhibit N for references to four UDRP decisions against Respondent. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent’s bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel finds that these considerations add to a finding that the disputed domain name was registered and used in bad faith.
Finally, 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 Complainant’s OMAHASTEAKS trademark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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 <omahastaks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 19, 2015
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