Deep Foods, Inc. v. Jamruke, LLC. c/o Manish
Patel
Claim Number: FA0602000648190
PARTIES
Complainant is Deep Foods, Inc. (“Complainant”), represented by Lawrence D. Mandel, of Mandel & Peslak, LLC, 80 Scenic Drive, Suite 5, Freehold, NJ 07728. Respondent is Jamruke, LLC. c/o Manish Patel (“Respondent”), represented by Joel G. MacMull, of INC Business Lawyers, 1201 - 11871 Horseshoe Way, Richmond, BC V7A 5H5, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deepfood.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 21, 2006.
On February 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <deepfood.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 20, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@deepfood.com by e-mail.
A timely Response was received and determined to be complete on March
20, 2006.
On March 24, 2006, the Forum received a timely Additional Submission
from Complainant in accordance with Supplemental Rule 7.
On March 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a leading manufacturer of Indian foods in the United
States. Complainant has used DEEP as a
trademark for its food products for many years, and owns various trademark
registrations for DEEP on the Principal Register of the U.S. Patent and
Trademark Office, dating back as far as 1984.
Complainant alleges that Respondent’s <deepfood.com> domain name is confusingly similar to
Complainant’s well-known DEEP mark; that Respondent is using this domain name
without authorization to divert Internet users interested in Complainant to a
website that promotes unrelated products and services; that Respondent
therefore lacks rights or legitimate interests in the domain name; that
Respondent’s principal is “a member of the Indian culture” and therefore is
likely to be familiar with Complainant and its mark; and that Respondent
therefore registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent operates various websites relating to food and other
industries, and has registered three food-related domain names,
<jamruke.com> (referring to a tropical fruit native to India),
<foodmixx.com>, and the disputed domain name, <deepfood.com>.
Respondent states that it selected the disputed domain name because the
word “deep” has many different meanings in various languages, and Respondent
intended “to harmonize several of these meanings into a single English short
word or phrase that attempted to marry the properties of East Indian ethereal
mysticism with the revelry often associated with food and feasts.” Respondent asserts that the disputed domain
name is comprised of a generic or descriptive term not exclusively associated
with Complainant. Respondent contends
that it has rights or legitimate interests in the domain name arising from use
of the name in connection with Internet advertising. Respondent takes issue with Complainant’s suggestion that its
principal should be presumed to have known of Complainant’s mark merely because
of his Indian ethnicity, and argues that there is no evidence Respondent had
such knowledge when the disputed domain name was registered. Respondent contends that it registered the
domain name in 1999 “as part of a comprehensive business strategy which
attempted to capture part of the food and hospitality market,” although it has
since abandoned that strategy.
C. Complainant’s Additional Submission
The Additional Submission tendered by Complainant responds to
Respondent’s submission and contains detailed allegations and evidence relating
to Respondent’s knowledge of Complainant and its DEEP mark. The Forum’s Supplemental Rule 7 regulates
the submission of additional statements and documents, but does not itself
authorize such additional submissions; the controlling provision is Paragraph
12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”), under which discretion to request such supplementation rests with the
Panel. See America Online, Inc. v. Miles, FA105890 (Nat’l Arb. Forum May
31, 2002). In general, a Panel should
consider additional submissions only in exceptional circumstances, such as
where they reflect newly discovered evidence not reasonably available to the
submitting party at the time of its original submission or rebut arguments by
the opposing party that the submitting party could not reasonably have
anticipated. See, e.g., America Online, Inc. v. Thricovil, FA638077 (Nat. Arb.
Forum Mar. 22, 2006); Deutsche Post AG v.
NJDomains, D2006-0001 (WIPO Mar. 1, 2006); Pierret v. Sierra Technology Group, LLC, FA472135 (Nat. Arb. Forum
July 1, 2005). In this case, as far as the
Panel is able to ascertain, the information contained in the Complainant’s
Additional Submission reasonably could have been included in Complainant’s
initial submission. The Panel therefore
declines to consider the material contained in the Additional Submission.
FINDINGS
The Panel finds that the disputed domain name
is confusingly similar to Complainant’s DEEP mark, that Respondent lacks rights
or legitimate interests in respect of the disputed domain name, and that
Respondent registered and is using the disputed domain name in bad faith.
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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
The disputed domain name is comprised of
DEEP, Complainant’s registered trademark for its food products; the generic
term “food”; and the generic top-level domain “.com”. The Panel concludes that the disputed domain name is confusingly
similar to Complainant’s mark.
Complainant’s allegations as to rights or
legitimate interests are sufficient to shift the burden of production to
Respondent, although Complainant ultimately bears the burden of proof on this
and all other elements required by the Policy.
See, e.g., Haemoscope Corp. v.
Digital Development Group, FA542015 (Nat. Arb. Forum Sept. 30, 2005). Respondent claims that its use of the
disputed domain name in connection with Internet advertising represents a bona fide offering of goods or
services under Policy ¶ 4(c)(i) sufficient to demonstrate rights or legitimate
interests.
Respondent’s use appears at best to involve
merely the redirection of random Internet traffic to a separate website
promoting unrelated goods and services; more likely, a substantial proportion
of that traffic results from confusion with Complainant’s mark. In any event, this is not a “bona fide
offering” as contemplated by the Policy.
The Panel concludes that Respondent lacks rights or legitimate interests
with respect to the disputed domain name.
Finally, Complainant must show that the
disputed domain name was registered and is being used in bad faith pursuant to Policy
¶ 4(a)(iii). In the view of the Panel,
Respondent’s use of the disputed domain name to redirect Internet users to a
website containing unrelated advertisements qualifies as bad faith use. Whether Respondent’s original registration
of the domain name was in bad faith, however, presents a closer question.
The Panel has considered Respondent’s
proffered explanation for its selection of the disputed domain name in 1999,
but ultimately finds that explanation implausible. Under the circumstances of this case, it seems more likely than
not that Respondent was in fact aware of Complainant’s mark at that time, and
that Respondent chose the domain name because of its similarity to the mark
rather than because of the different meanings of the word “deep” in various
languages. Mere constructive knowledge
of the mark is of course insufficient, see,
e.g., Barclays Global Investors, N.A.
v. SocialFunds.com, LLC, FA196046 (Nat. Arb. Forum Nov. 5, 2003); the
circumstances here, however, support an inference that Respondent had actual
knowledge of the mark. The Panel
concludes that Complainant has sustained its burden of proving that the
disputed domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deepfood.com>
domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 10, 2006
After the above Decision was prepared (but before it was communicated
to the parties), the Forum received an Additional Submission from the
Respondent. The Forum determined, and
the Panel has confirmed, that Respondent’s Additional Submission is deficient
under the Forum’s Supplemental Rule 7, because it was not received by the Forum
within five calendar days after the date on which the Forum received
Complainant’s Additional Submission.
(Complainant’s Additional Submission was received on March 24, 2006;
Respondent’s Additional Submission was received on April 4, 2006.) Respondent nonetheless requests that its
Additional Submission be considered by the Panel (apparently under the mistaken
impression that it was only one day late), explaining that the delay resulted
from difficulty in having an affidavit notarized.
Respondent’s Additional Submission is comprised entirely of responses
to the allegations in Complainant’s Additional Submission. Because the Panel has already decided to
disregard that submission, the Panel need not reach the question of whether
justice requires consideration of Respondent’s untimely Additional Submission.
David E. Sorkin, Panelist
Dated: April 10, 2006
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