Pont Neuf Productions, LLC and New Concept Brands LLC v. Caudill, David
Claim Number: FA1804001780801
Complainant is Pont Neuf Productions, LLC and New Concept Brands LLC (“Complainant”), represented by Andrea J. Mealey of FisherBroyles LLP, Massachusetts, USA. Respondent is Caudill, David (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finaledesserts.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2018; the Forum received payment on April 6, 2018.
On April 9, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <finaledesserts.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2018 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@finaledesserts.com. Also on April 10, 2018, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two identified Complainants, Pont Neuf Productions, LLC, and New Concept Brands LLC. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Supplemental Rule 1(e) thus allows multiple parties to proceed as one where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), where a panel concluded:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
And, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Amer. Family Health Svcs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of a mark.
The Complaint before us alleges that New Concept Brands LLC and Pont Neuf Productions, LLC are sister entities under common ownership and control, and that Pont Neuf Productions, LLC was formed to expand New Concept Brands LLC’s commercial baking and candy making business. The Complaint further asserts that Both New Concept Brands LLC and Pont Neuf Productions, LLC are in the business of making, selling and distributing desserts such as baked goods, cakes, pastries, cookies and chocolates under the FINALE Mark. Respondent does not contest these allegations.
In the circumstances described in the Complaint, there is a sufficient nexus between the two identified complaining entities to justify that they be treated as a single party complainant. Accordingly, they will together be denominated as “Complainant” for all purposes in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of making, selling and distributing desserts such as baked goods, cakes, pastries, cookies and chocolates under the FINALE mark.
Complainant has rights in the FINALE mark under the common law, as well as by registration of the mark with the United States Patent and Trademark Office (“USPTO”), on file as Registry No. 5,078,934, registered November 8, 2016.
Complainant and its predecessor in interest have continuously and exclusively used the FINALE mark since 1998.
Complainant and its predecessor in interest have spent substantial amounts of time and money in advertising and promoting their baked goods, candy and other food products offered under the FINALE mark.
Respondent registered the domain name <finaledesserts.com> on or about June 30, 2000.
The domain name is confusingly similar to Complainant’s FINALE mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use its FINALE mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
The domain name does not resolve to an active website, and access to it has been blocked due to its potentially dangerous content, namely harmful malware.
Respondent has no rights to nor legitimate interests in the domain name.
Respondent had actual knowledge of Complainant’s rights in the FINALE mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the FINALE trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017), finding rights in a trademark sufficient to satisfy Policy ¶ 4(a)(i) by virtue of its registration with a national trademark authority).
However, presumably because Respondent’s <finaledesserts.com> domain name was registered in the year 2000, before Complainant secured registration for its FINALE trademark in 2016, Complainant also claims rights in that mark under the common law dating from 1998. Common law rights in a mark can stand in the same stead as rights acquired by registration. See, for example,
Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that a UDRP complainant adequately established common law rights in a mark satisfying the requirements of Policy ¶ 4(a)(i) by submitting evidence of its “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising”).
Here Complainant provides the following evidence in support of its claim of common law rights in the FINALE mark:
· Room for Dessert, LLC, Complainant’s predecessor in interest to the FINALE mark, was formed in 1997 to operate Finale bakery cafes and “desserteries.”
· Room For Dessert, LLC, operated under the FINALE mark continuously for 17 years, serving baked goods and desserts to millions of customers and building up goodwill in the mark.
· Room for Dessert, LLC sold its assets, including the FINALE brand and mark, to New Concept Brands LLC in 2015.
· Thereafter Complainant continued making and marketing desserts and baked goods under the FINALE mark without interruption to the present.
· Complainant has for years promoted its products marketed under the FINALE mark on its official websites.
Having in mind that Respondent does not contest Complainant’s contentions in support of its claim of common law rights in its FINALE mark, these assertions are likewise sufficient to establish Complainant’s rights in that mark under the common law for purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <finaledesserts.com> domain name is confusingly similar to Complainant’s FINALE mark. The domain name contains the mark in its entirety, with only the addition of the generic term “desserts,” which describes Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (determining that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and a generic Top Level Domain, the differences between the domain name and the trademark were insufficient to distinguish one from the other for purposes of the Policy).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <finaledesserts.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <finaledesserts.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the FINALE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Caudill, David,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent does not use the <finaledesserts.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, but rather that the domain name is not actively used except to distribute malware. Such use of the domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Noodle Time, Inc. v. Bharat Kumar, FA1771678 (Forum March 18, 2018):
The Panel finds that Respondent’s disputed domain name is used in connection with malware, failing to bestow rights and legitimate interests in the domain name [under Policy ¶ 4(c)(i)-(iii)].
See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum September 2, 2004):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the challenged <finaledesserts.com> domain name to distribute malware to unsuspecting Internet users. Under Policy ¶ 4(a)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Noodle Time, Inc. v. Bharat Kumar, FA1771678 (Forum March 18, 2018):
[T]he Panel finds that the resolving webpage associated with the infringing domain name contains malware [which demonstrates that the domain name was registered and is being used] in bad faith per Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant’s predecessor in interest and its rights in the FINALE mark when Respondent registered the <finaledesserts.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <finaledesserts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 14, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page