Don’s Dairy Supply, Inc. v. Al Perkins
Claim Number: FA1703001720052
Complainant is Don’s Dairy Supply, Inc. (“Complainant”), represented by Charles von Simson of Barclay Damon LLP, New York. Respondent is Al Perkins (“Respondent”), Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <donsdairysupply.com>, registered with Wild West Domains, Llc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 3, 2017.
On March 6, 2017, Wild West Domains, Llc confirmed by e-mail to the Forum that the <donsdairysupply.com> domain name is registered with Wild West Domains, Llc and that Respondent is the current registrant of the name. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, Llc 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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@donsdairysupply.com. Also on March 7, 2017, 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 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Don’s Dairy Supply, is a supplier of goods and services related to dairy farming throughout Upstate New York and Northern Pennsylvania. Complainant has common law rights in the DON’S DAIRY SUPPLY mark based upon its continuous use and promotion of the mark since Complainant’s incorporation on May 5, 1989. Respondent’s <donsdairysupply.com> is identical or confusingly similar to the DON’S DAIRY SUPPLY mark, as the disputed domain name merely omits the punctuation and spacing in the mark and adds the generic top-level domain name “.com.”
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent purchased <donsdairysupply.com> at auction after Complainant accidentally allowed its registration of the domain name to lapse. Respondent is not commonly known by the disputed domain name and Complainant has not licensed Respondent to use the mark in any fashion. The disputed domain name initially redirected to a pornography website, a use which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered and used <donsdairysupply.com> in bad faith. Respondent sole purpose in adopting the disputed domain name was to force Complainant to buy it back. Respondent is a serial bad faith registrant with a history of adverse UDRP findings. Further, Respondent initially redirected traffic to a website featuring adult content.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered <donsdairysupply.com> on February 19, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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(f), 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 (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.”).
Complainant claims common law rights in the DON’S DAIRY SUPPLY mark dating back to the first use of the mark in commerce on May 5, 1989. Complainant asserts that it has continuously used the mark since that date in affiliation with its dairy supply business. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant points to the signage on its trucks and presence at shows and events as evidence of such a secondary meaning. Traditionally, a secondary meaning is also established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (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.”). Complainant claims it spends over $20,000 annually on advertisements promoting its services using the mark, and sponsors a little league team and tractor pull tractor. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights by showing the DON’S DAIRY SUPPLY mark has taken on a secondary meaning in association with Complainant’s business.
Complainant does not explicitly claim that the <donsdairysupply.com> domain name is identical or confusingly similar to the DON’S DAIRY SUPPLY mark, though does argue that Complainant was the original registrant of the disputed domain name and registered it for the purpose of promoting its brand. The Panel notes that the disputed domain name only differs from the mark in question by omitting the punctuation and spacing from the mark and adding the gTLD “.com.” Omission of spaces and apostrophes in a mark to create a domain name does not distinguish the domain name from the mark in a Policy ¶ 4(a)(i) analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). Likewise, addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds the disputed domain name to be identical or confusingly similar to the DON’S DAIRY SUPPLY mark per Policy ¶ 4(a)(i).
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 (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 (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 does not argue that Respondent is not commonly known by the disputed domain name, but the Panel notes that the WHOIS information of record names Respondent as “Al Perkins.” Where a response is lacking, WHOIS information can be used to determine if a Respondent is commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel therefore determines that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent lacks rights and legitimate interests in <donsdairysupply.com> because the disputed domain name is not currently being used for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, after Respondent acquired the disputed domain name, Complainant contends that the domain name initially resolved to a website featuring pornographic content. Complainant does not provide evidence for this claim. Use of a disputed domain name to resolve to adult content does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per the Policy. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum October 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that Respondent’s lack of rights and legitimate interests in <donsdairysupply.com> is evident through its activity in registering the domain shortly after Complainant inadvertently let its own registration lapse. When a respondent opportunistically registers a disputed domain name after a complainant lets it lapse, the respondent can be held to lack rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Clark v. HiNet, Inc., FA 405057 (Forum Mar. 4, 2005) (finding that the respondent lacked rights and legitimate interests in the domain name because it failed to respond to the complaint and it “opportunistically” registered the domain name when the complainant inadvertently allowed the registration to lapse). Complainant claims it has owned the disputed domain name since 2007, until its registration was allowed to lapse in early February 2017. Respondent bought the disputed domain name at auction on February 17, 2017. The Panel finds that the circumstances surrounding Respondent’s obtaining of the disputed domain name evinces its lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith registration and use of the disputed domain name is evident through their history of bad faith, opportunistic registrations. A showing that the registration of a disputed domain name is part of a pattern of bad faith registration on the part of a respondent can be evidence of that respondent’s bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (finding that the respondent’s pattern of registering domain names which had inadvertently been permitted to lapse satisfies the provisions of Policy ¶ 4(b)(ii)). Complainant points to a list of adverse UDRP decisions against Respondent (e.g. Justice-Burrage v. Perkins, D2016-0545 (WIPO May 1, 2016); Van Beek Drywall, Inc. v. Perkins, FA 1660084 (Forum March 6, 2016)). The Panel therefore finds that Respondent’s registration of <donsdairysupply.com> is part of a pattern of bad faith registrations and thus shows Policy ¶ 4(b)(ii) bad faith.
Complainant also contends that Respondent’s use of the disputed domain name initially to redirect to a pornographic website demonstrates its bad faith. Use of a disputed domain name to direct Internet users to adult oriented content can demonstrate a respondent’s bad faith per Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum February 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Complainant does not provide evidence of this use. Given the absence of the Response by Respondent, the Panel finds Complainant’s assertion compelling and finds Respondent to have acted in bad faith per Policy ¶ 4(a)(iii).
Complainant then argues that Respondent took advantage of Complainant’s registration lapsing in bad faith. Taking advantage of a lapsing of a complainant’s registration to buy a disputed domain name is evidence of Policy ¶ 4(a)(iii) bad faith. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith). The Panel recalls that Respondent purchased the disputed domain name shortly after Complainant inadvertently let it’s registration lapse in early February, 2017. The Panel therefore finds that Respondent acted in bad faith per 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 <donsdairysupply.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 14, 2017
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