Tri-Union Seafoods, LLC dba Chicken of the Sea v. Daniel Berke
Claim Number: FA1704001728521
Complainant is Tri-Union Seafoods, LLC dba Chicken of the Sea (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Daniel Berke (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chickenoftheseaclassaction.com> and <chickenofthesealawsuit.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2017; the Forum received payment on April 24, 2017.
On April 25, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chickenoftheseaclassaction.com> and <chickenofthesealawsuit.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@chickenoftheseaclassaction.com, and postmaster@chickenofthesealawsuit.com. Also on April 27, 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 May 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant, Tri-Union Seafoods, LLC dba Chicken of the Sea, is a leading producer of seafood products based in San Francisco, California. In connection with this business Complainant uses the CHICKEN OF THE SEA mark to promote its goods and services. Complainant has rights in the mark based upon the mark’s registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 97,192, registered May 19, 1914). Respondent’s domain names are confusingly similar to Complainant’s mark as both contain the mark in its entirety and merely adds the generic terms “class,” “action,” and “lawsuit” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to register domain names containing Complainant’s marks. Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain names resolve to webpages containing pay-per-click links to third-party websites.
Respondent registered and used the disputed domain names in bad faith. Respondent attempts to gain click-through revenue through the active hyperlinks on the resolving webpage, which is evidence of Policy ¶ 4(b)(iv). Furthermore, Respondent had constructive and actual notice of Complainant’s marks due to the well-known nature of Complainant’s marks—evidence of bad faith via the non-exclusive nature of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Tri-Union Seafoods, LLC dba Chicken of the Sea of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the CHICKEN OF THE SEA, and variations thereof, which it has continuously used since at least as early as 1914, in connection with its production and distribution of seafood products.
Respondent is Daniel Berke of New York, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain names were registered on or about December 22, 2016.
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(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 rights in the mark based upon the mark’s registration with the USPTO (Reg. No. 97,192, registered May 19, 1914). Registration of a mark with a trademark authority such as the USPTO has been found to be sufficient to establish rights in the mark for a Policy ¶ 4(a)(i) analysis. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the CHICKEN OF THE SEA mark.
Complainant contends Respondent’s disputed domain names are confusingly similar to Complainant’s mark. The addition of generic terms and a gTLD has been held to not sufficiently differentiate between domain names and marks per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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). Complainant has met this burden.
Complainant argues Respondent lacks rights and legitimate interests in the disputed domain names, and that Respondent is not commonly known by the disputed domain names. Where there is no evidence to the contrary, WHOIS information can support a finding that a respondent has not been commonly known by a domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (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); see also 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 WHOIS information of record names “Daniel Berke” as the registrant of both names. Based on the WHOIS information, and Respondent’s failure to submit any pleadings refuting Complainant’s assertions, the Panel here finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant asserts, the domain names resolve to webpages containing pay-per-click advertising for Respondent’s benefit. Use of a disputed domain name to attract Internet users for a respondent’s commercial gain has been noted as indicative of a lack of rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) & (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel here finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) & (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues Respondent registered and used the disputed domain names in bad faith through its attempt to capitalize on Complainant’s mark and creation of a likelihood of confusion with Complainant’s mark. Specifically, Complainant argues Respondent’s use of the resolving webpages to host pay-per-click links is evidence of Respondent’s bad faith. Prior decisions have found that use of a disputed domain name to attract Internet users to a page hosting pay-per-click links for the presumed benefit of the registrant is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (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)). The Panel here finds that Respondent registered and utilized the domain name in bad faith per Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chickenoftheseaclassaction.com> and <chickenofthesealawsuit.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 8, 2017
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