Bunn-O-Matic Corporation v. Domain Administration Limited c/o David Halstead
Claim Number: FA0608000785539
Complainant is Bunn-O-Matic Corporation (“Complainant”), represented by Vladimir
Khodosh, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bunomatic.com>, registered with Fabulous.com Pty Ltd.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 30, 2006.
On August 28, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bunomatic.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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@bunomatic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <bunomatic.com> domain name is confusingly similar to Complainant’s BUNN OMATIC mark.
2. Respondent does not have any rights or legitimate interests in the <bunomatic.com> domain name.
3. Respondent registered and used the <bunomatic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bunn-O-Matic Corporation, manufactures and sells coffee brewing equipment. Since the 1950’s, Complainant has continuously used the BUNN OMATIC mark in connection with its products and services.
Complainant holds several federal trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for the BUNN
OMATIC mark (Reg. No. 694,904 issued March 22, 1960; Reg. No. 1,292,770 issued
September 4, 1984). Complainant also
holds registrations for the BUNN mark with the USPTO and other national
trademark authorities worldwide, including authorities in
Respondent’s <bunomatic.com> domain name, which it registered on September 6, 2002, resolves to a commercial web directory with links to websites related to coffee and kitchen appliances, some of which compete with Complainant’s products.
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."
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.”).
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.
Complainant has sufficiently demonstrated its rights in the BUNN OMATIC mark pursuant to Policy ¶ 4(a)(i) by providing evidence of its valid trademark registrations for the mark. See Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Complainant has also sufficiently demonstrated that the <bunomatic.com>
domain name is confusingly similar to its registered BUNN OMATIC mark, as the
disputed domain name is similar in pronunciation and differs from the mark by
merely one letter. The Panel holds that
Respondent has failed to differentiate the <bunomatic.com> domain
name from Complainant’s BUNN OMATIC mark under Policy ¶ 4(a)(i)
by merely omitting one letter from the mark.
See CEC Entertainment, Inc. v. Peppler, FA
104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com>
domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark
because the domain name only differed from the mark by one letter); see also
YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the
domain name <yawho.com> is confusingly similar to the complainant’s YAHOO
mark).
The Panel finds that Complainant has satisfied this element of the Policy.
Complainant contends that Respondent lacks rights and
legitimate interests in the <bunomatic.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and the burden then
shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also
Hanna-Barbera
Productions, 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <bunomatic.com> domain name. See Geocities v. Geocities.com,
D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or
legitimate interests in the domain name because the respondent never submitted
a response or provided the panel with evidence to suggest otherwise); see
also BIC Deutschland GmbH & Co.
KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a
response, Respondent has failed to invoke any circumstance which could
demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate
interests in the domain name”). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record suggesting that
Respondent is commonly known by the <bunomatic.com>
domain name, and Complainant has not authorized or licensed
Respondent to register a domain name incorporating a variation of its
registered BUNN OMATIC mark. Therefore,
Respondent has not established rights or legitimate interests in the <bunomatic.com > domain name pursuant
to Policy ¶ 4(c)(ii).
See Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometer.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute); see also Coppertown
Drive-Thru Systems, LLC v. Snowden, FA
715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <bunomatic.com> domain name, which is confusingly similar to Complainant’s BUNN OMATIC mark, resolves to a web directory containing links to Complainant’s direct competitors and to unrelated content. In Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb. Forum Aug. 11, 2004), the panel found that the respondent’s use of domain names that were confusingly similar to the complainant’s CITIBANK marks to redirect Internet users seeking the complainant’s products to a website with links offering products that competed with the complainant did not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Because Respondent is also using a domain name to redirect Internet users to a website providing links to Complainant’s competitors, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Complainant has satisfied this element of the Policy.
By using the <bunomatic.com> domain name, which
is confusingly similar to Complainant’s BUNN OMATIC mark, to maintain a
commercial web directory displaying links to Complainant’s competitors,
Respondent has demonstrated that it registered the disputed domain name for the
primary purpose of disrupting Complainant’s business. The Panel finds Respondent’s conduct to
constitute bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent); see also EBAY, Inc.
v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent’s commercial
use of the <bunomatic.com> domain name also suggests bad faith
under Policy ¶ 4(b)(iv). In T-Mobile USA, Inc. v.
utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel held
that the registration and use of a domain name confusingly similar to a
complainant’s mark to direct Internet traffic to a commercial “links page”
constituted bad faith where the respondent was likely profiting from
click-through fees or other revenue sources.
Because Respondent is using the <bunomatic.com> domain name
for similar purposes, the Panel finds that Respondent is taking advantage of
the confusing similarity between the disputed domain name and Complainant’s
mark in order to profit from the goodwill associated with the mark. Such conduct is indicative of bad faith
registration and use under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com>
to operate its search engine, a name that infringes upon Complainant’s mark,
Respondent is found to have created circumstances indicating that Respondent,
by using the domain name, has intentionally attempted to attract, for
commercial gain, Internet users to Respondent’s website by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the website or of a product or service on the
website as proscribed in Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bunomatic.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 11, 2006
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