Oneida Victor, Inc. v.
RedHead Technologies
Claim Number: FA0609000796442
PARTIES
Complainant is Oneida Victor, Inc. (“Complainant”), represented by Larry
D. Donovan, of Tucker Ellis and West LLP, 1100
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <oneidavictor.com>, which was
registered with Go Daddy Software, Inc (“Go Daddy”) on December 16, 2005.
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the NAF”) electronically on September 15, 2006;
the NAF received a hard copy of the Complaint on September 18, 2006.
On September 15, 2006, Go Daddy confirmed by e-mail to the NAF that
the disputed domain name is registered with it
and that the Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound
by its 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 September 19, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 9, 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@oneidavictor.com by
e-mail.
A timely Response was received and determined to be complete on October 9, 2006.
An Additional Submission from Respondent was received on October 16,
2006 and was deemed to be timely and complete in accordance with the NAF’s
Supplemental Rule 7.
On October 13, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the NAF
appointed David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FACTUAL BACKGROUND
Complainant, Oneida Victor, Inc., owns two registrations in the US for the trademark ONEIDA VICTOR – No. 248,227 which was registered on October 16, 1928 and renewed in 1988 for “Animal traps” in old Class 50 claiming first use from February 1, 1926, and No. 3,132,976 which was registered on August 22, 2006 for “Golf shirts, hats, knit shirts, night shirts, open-necked shirts, polo shirts, shirts, short-sleeved or long sleeved t-shirts, shorts-sleeved shirts, sleep-shirts, small hats, sweat shirts, t-shirts, toboggan hats, pants and caps, wind shirts and woolly hats” in Class 25 claiming first use from August 17, 2000.
Complainant or its predecessors in interest, have used the name ONEIDA VICTOR since at least as early as February 1, 1926 in commerce in connection with the manufacture, distribution and sales of animal traps, and it has enjoyed a powerful and respected reputation. In fact, after over 80 years of use, the name is a popular, well-known and trusted brand known by consumers and competitors alike in US animal trap channels of trade
Respondent supplied no details about itself.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that its
rights in the name ONEIDA VICTOR date back to 1926. Its earlier registration,
No. 248,227 predates any registration of the disputed domain name while its
registration No. 3,132,976 has been used in commerce by Complainant since August
17, 2000 which predates any registration of the disputed domain name.
Complainant therefore has the prima facie
exclusive prior right to use the trademark ONEIDA VICTOR or any variants
or derivations thereof in the
The disputed domain name <oneidavictor.com> violates paragraph 4(a)(i) of the Policy. It contains elements that are identical to and/or confusingly similar to Complainant’s two trademark registrations for the following reasons:
(a) Visually,
the disputed domain name is confusingly similar to Complainant’s two trademark
registrations. It contains the entire coined term “Oneida Victor” and it is
therefore identical except for a space between the words “
(b) Phonetically, the disputed domain name is the same as Complainant’s two trademark registrations. A speaker has no alternative but to say “Oneida Victor” as part of the entire pronunciation both of Complainant’s trademarks and of the disputed domain name.
(c) The domain name has the same commercial meaning and source identification to the public as Complainant’s two trademark registrations. They mean nothing other than animal traps or apparel associated with Complainant and its trademarks.
(d) Because of this identical sight, sound and meaning, members of the public who find the disputed domain name on the Internet, on search engines, or elsewhere, are likely to believe falsely and mistakenly either that its source or origin and associated web site(s) is Complainant or its affiliates, or that the disputed domain name is sponsored by, endorsed by, approved by, licensed by, connected, associated or affiliated with Complainant – when in fact the opposite is true.
Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name pursuant to ICANN’s Rule 3(b)(ix)(2) and paragraph 4(a)(ii) of the Policy, for the following reasons:
(a) Respondent is not related to Complainant and has not received any license, permission or consent to use or own the trademark ONEIDA VICTOR.
(b) Complainant’s established rights to the name ‘Oneida Victor’ in connection with animal traps predate by almost 80 years the registration of the disputed domain name.
(c) Upon information and belief, Respondent is not known as Oneida Victor nor does it do business as Oneida Victor. Respondent was using the disputed domain name to redirect visitors to DUKETRAPS.COM/8contact/contact.html, (“the Duke web page”) which is a web page belonging to the Duke Company who is a direct competitor of Complainant. This web page, a copy of which was attached to the Complaint. is employed for the purpose of acquiring animal traps manufactured by Duke Company and was not used for the purpose of acquiring animal traps manufactured or sold by Complainant.
(d) ‘Oneida
Victor’ is not even a dictionary word.
It is an inherently unique coined term, with registered
Respondent registered the disputed domain name in bad faith and in violation of ICANN’s Rule 3(b)(ix)(3), and paragraph 4(a)(iii) of the Policy for the following reasons:
(a) Respondent was using the disputed domain name to redirect visitors to a web page belonging to the Duke Company as detailed above.
(b) By redirecting traffic from the page at the disputed domain name to the Duke Web Page, the disputed domain name was being used intentionally to attempt to attract, for commercial gain, Internet users to another on-line location, to wit: the Duke web page, and this redirection created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement by Complainant of the Duke web page and to products offered for sale by the Duke Company.
(c) Complaint’s representative, Larry B. Donovan, sent a cease and desist letter to Respondent on February 17, 2006 and a copy of this was attached to the Complaint.
(d) After this cease and desist letter was sent Respondent, although having no legitimate rights to the disputed domain name, has ceased redirecting traffic to the Duke web page, but has refused to transfer the disputed domain name to Complainant. Complainant can only conclude from this that Respondent’s primary use of the disputed domain name has been to disrupt its own business.
(e) Since the disputed domain name contains the entire trademark ONEIDA VICTOR, Complainant has no alternative but to conclude and assert that the registration and use of the disputed domain name was deliberately designed and calculated to trade on and misappropriate the enormous monetary value, reputation, notoriety, fame and goodwill in the Complainant’s trademarks. Its registration was made to unjustly enrich Respondent by enabling it to obtain unfairly the benefits and advantages of Complainant’s own use, marketing, advertising of its trademarks. For the same reasons, Complainant has no alternative but to conclude and assert that Respondent has capitalized on the high consumer demand for Complainant’s ‘Oneida Victor’ brand, and on the high-quality reputation and goodwill associated with the corresponding trademarks. A domain name consisting of nothing more than Complainant’s entire trademarks and trade name is, by itself, a proper inference of bad faith.
(f) The disputed domain name places a cloud over Complainant’s title and ownership in and to all of its trademarks in connection with its goods.
(g) Respondent’s intentional registration of the disputed domain name has deprived Complainant of its right to determine and decide with whom it and its trademarks shall be connected and associated.
(h) Since Complainant’s trademarks are so established and famous, Complainant has no alternative but to conclude and assert that Respondent’s registration and use of the disputed domain name for selling goods in the same market as Complainant’s was done with the blatant and deliberate intent to trade on and procure Complainant’ goodwill, fame, renown, reputation, worldwide notoriety and advertising as related to its trademarks, to trade on and procure use of these trademarks alone, to prevent Complainant’s own use of its trademarks, to deceive and confuse the consuming public, and to blur whatever distinctions existed between the parties. Registration of Complainant’s strong and widely known coined term and mark as a domain name and use of the same with animal traps is plainly indicative of bad faith.
(i) Complainant asserts that Respondent registered, acquired and uses the disputed domain name primarily for the purpose of selling competing goods, for confusing the public, and/or for the purpose of selling, renting, or otherwise transferring it to Complainant who is the true owner of the trademark ONEIEDA VICTOR or to one of Complainant’s competitors for valuable consideration in excess of out-of pocket costs directly related to the name.
(j) Based on the foregoing circumstances, Complainant has no alternative but to conclude and assert:
· that Respondent has registered and used the disputed domain name in order to prevent the true owner of the ONEIDA VICTOR trademark from reflecting the mark in corresponding domain names.;
· that Respondent has registered and uses the disputed domain name primarily for the purpose of disrupting Complainant’s business;
· that by registering and using the disputed domain name, Respondent has intentionally attempted to use it to divert and attract, for commercial gain, Internet users to its Domain, URL, web site or other on-line location, by creating a likelihood of confusion with the its trademarks as to the source, sponsorship, affiliation, association or endorsement of the disputed domain name, URL, web site or other on-line location.
B. Respondent
Respondent responded to the Complaint as follows:
1. Respondent admits that the name Oneida Victor, Inc. is used in connection with sales of animal traps.
2. Respondent admits that the purported trademark certificate attached to the Complaint appears to predate any registration of the disputed domain name.
3. Respondent admits that the disputed domain name uses the same letters that make up the purported trademarks attached to the Complaint and that if the disputed domain name were spoken, it would be likely to be pronounced phonetically the same as the purported trademark.
4. No web site is associated with the disputed domain name. A web site was associated with the domain name for a brief period from late December 2005 until late February 2006, but Respondent denies that members of the public are necessarily likely to believe mistakenly that Complainant or one of its affiliates is the source or origin of the website that was associated with the domain name for that brief period, especially because Respondent believes that the domain name was unlikely to have been included on any search engines during that period.
5. Respondent admits that it is not related to Complainant, and that it has not been licensed to use the described trademark. Respondent admits that the date of the trademark No. 248,227 predates registration of the disputed domain name by more than seventy (70) years. Respondent admits that it is not known as Oneida Victor nor does it do business as Oneida Victor. Respondent admits that for a brief period from late December 2005 to late February 2006, the domain name forwarded to the URL “http://www.duketraps.com”, which by default of the web server displayed the page “http://www.duketraps.com/index.html”, but specifically denies that the copy of the page attached to the Complaint is the page to which the disputed domain name forwarded.
6. Respondent specifically denies that this forwarding was to “redirect” as the Complaint suggests, because Complainant had no web site at the time in question. Respondent admits that the Duke Company and Complainant are both in the business of selling animal traps. Respondent admits that it knows of no dictionary of standard usage that includes the term “Oneida Victor.” Respondent further avers that Complainant had no website, nor did it attempt to sell products over the internet at the time in question.
7. Respondent denies that it registered the domain name in bad faith or knowingly in violation of the described rules.
8. Respondent avers that no one could use the web page to which the disputed domain name forwarded to obtain animal traps from anyone and that Duke Company does not sell traps directly to the public.
9. Respondent denies that its diversion to the Duke web page was intentionally to attract, for commercial gain, internet users to another on-line location.
10. Upon receiving the cease and desist letter from Complainant’s attorney, Respondent immediately ceased all use of the disputed domain name. Respondent specifically denies that it has refused to transfer the domain name to the Complainant. Indeed, Respondent offered to transfer the disputed domain name to Complainant, but because of threats of litigation, Respondent asked for releases. Respondent understood that discussions regarding the transfer of the domain name to Complainant were ongoing, and was thus surprised to receive this Complaint. Respondent denies any intention to disrupt the business of Complainant or that it did anything that caused such an effect. Respondent denies that the disputed domain name was ever used to “re-direct” any internet user.
11. Respondent specifically denies that it registered or ever used the disputed domain name “for selling goods in the same market” as Complainant has asserted in the Complaint.
12. Respondent avers that no one could purchase any goods using the disputed domain name or the web page to which it was briefly link and that the Duke Company does not sell animal traps directly to the public.
13. Respondent avers that at the time it registered the disputed domain name, Complainant had not registered a domain name.
C. Additional Submissions
In its Additional Submission,
Respondent sought to correct a misstatement in its Response. In this Response, Respondent
had stated that the Duke Company does not sell traps directly to the
public. These statements should have
stated that the Duke Company does not sell traps directly to the public through
its website. The Duke Company does, on
occasion, when contacted directly by a would-be buyer, sell directly to that
buyer.
FINDINGS
1.
Complainant
sells animal traps for hunters under the trademark ONEIDA VICTOR. This unusual
name was first registered by Complainant in 1928. This registration is in force
and it has been in use for some 80 years, since 1926. Complainant took out a
further registration of ONEIDA VICTOR for clothing earlier this year, claiming
use since 2000.
2.
Respondent
registered the disputed domain name <oneidavictor.com> in December
2005 and linked it to a web site operated by one of Complainant’s competitors
who is also in the business of selling animal traps. However this link was
taken down at about the same time as Complainant wrote to Respondent to object
to its name being misappropriated in this way.
3.
It would
appear that there may have been some negotiations between the parties.
Complainant claims that Respondent refused to transfer the disputed domain name., but Respondent denies this.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.
Both of Complainant’s trademark registrations
consist of the words ONEIDA VICTOR. In the oldest one, the words are written in
block capitals and in a semi-circle. In the later mark, only the initial letter
of each word is in block capitals. Yet the words are identical to the disputed
domain name except that this has a space between the two words and the generic
TLD ‘.com’ at the end. However the latter is something which is always ignored
when comparing a trademark with a domain name, and of course a domain name
cannot contain a space.
In the opinion of the Panel the disputed
domain name is identical to Complainant’s trademarks and indeed Respondent has
virtually admitted as much.
Therefore ¶ 4(a)(i) is proved.
Complainant has made out a prima facie case and in these
circumstances the burden shifts to Respondent to refute it. In the opinion of
the Panel it has signally failed to do so.
Complainant contends that Respondent is not using
the disputed domain name in connection with either a bona fide
offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that Respondent
originally used the disputed domain name to redirect Internet users to the
commercial website of a company called Duke Traps where there were offered
animal traps in direct competition with Complainant’s similar products. Respondent admits this, although without
providing any explanation of the link between itself and Duke Traps.
In Ameritrade Holdings Corporation v.
Polanski, FA 102715 (Nat. Arb. Forum Jan.11, 2002), the Panel found
that the Respondent’s use of the disputed domain name to redirect Internet
users to a financial services website, which competed with the Complainant, was
not a bona fide offering of goods or services. In Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb.
Forum Dec. 5, 2003), the Panel held that the Respondent was
not using the domain names for a bona fide offering of goods or services
nor a legitimate noncommercial or fair use because the Respondent used the
names to divert Internet users to a website that offered services that competed
with those offered by the Complainant under its marks.
Thus it is clear to the Panel that Respondent’s
use of the disputed domain name to redirect Internet users to a commercial
website offering traps in direct competition with Complainant is neither a bona
fide offering of goods or services, nor a legitimate noncommercial or fair
use pursuant to ¶¶ 4(c)(i) and (iii) of the Policy.
Complainant further asserts that Respondent is
not commonly known by the disputed domain name. Indeed, Respondent’s
WHOIS information clearly identifies Respondent as “RedHead Technologies.” In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003), the Panel looked to
the Respondent’s WHOIS information as evidence, stating that, “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” was
one factor in determining that ¶ 4(c)(ii) of the
Policy did not apply. Similarly,
in Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003), the Panel found that the fact that “given the WHOIS contact information for the disputed domain [name],
one can infer that Respondent, Onlyne Corporate Services11, is not commonly
known by the name ‘welsfargo’ in any derivation.” Thus, it is clear to the Panel that since
Respondent is not commonly known by the disputed domain name, as contemplated
by ¶ 4(c)(ii) of the Policy, he lacks rights or
legitimate interests in the disputed domain name.
Respondent has failed to utilize the disputed
domain name in connection with a legitimate website, or to set forth plans for
such use, after receiving Complainant’s cease and desist letter which, in the
opinion of the Panel, is further evidence that Respondent lacks rights or
legitimate interests in the disputed domain name. In Melbourne
IT Ltd. v. Stafford, D2000-1167 (WIPO October 16, 2000), the Panel found no rights or legitimate
interests in the domain name where there was no proof that the Respondent made
preparations to use the domain name or one like it in connection with a bona
fide offering of goods and services, the domain name did not resolve to a
website, and the Respondent was not commonly known by the domain name. Similarly, in L.F.P.,
Inc. v. B and J Properties, FA 109697 (Nat. Arb. Forum May 30,
2002), the Panel declined to find rights or legitimate interests in a disputed
domain name where the Respondent had not developed a website in connection with
the disputed domain name, saying that, “a
Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an
extended period of time when that Respondent might be capable of doing
otherwise.”
Respondent has chosen to register a domain
name which is identical to a trademark that has been in use for some 80 years.
Admittedly Complainant has produced no concrete examples of this use, but a
cursory search which the Panel conducted via the Google® search engine revealed
numerous examples of different types of hunting traps offered for sale by
Complainant under the trademark ONEIDA VICTOR. Clearly, the only person who
could possibly have any right to this singular term must be Complainant.
Respondent has put forward no explanation as
to why he should have chosen to register a domain name that consists of a name
that is not a dictionary term, that is unique and unusual and that is identical
to Complainant’s long and well established name, but it is clear to the Panel
that he cannot possibly have had any legitimate reason for doing so.
Thus, ¶ 4(a)(ii) is
also amply proved.
Respondent has admitted that he was using the
disputed domain name to redirect Internet users to a commercial website
selling animal traps and related products, which is in direct competition with
Complainant. However he also
says that this link to the Duke Traps web site was short lived as it was only
in existence for a mere two months. However it is noticeable that the link was
only removed when Complainant’s attorney wrote to object. Presumably if there
had been no objection the link would still be in existence.
Respondent then attempts to explain the link away by saying that no one
could possibly have been confused because Complainant has no website of its
own. However it is by no means unusual for someone seeking information about a
corporation or a particular named product to make a search either by using the name
he knows plus the TLD ‘.com’ or by
using the mark in a generic internet search engine. Such a search during the
crucial two months when the link was in operation would have led the visitor to
the Duke Traps website.
Respondent also claims that the example of
the link that was filed by Complainant as part of its Complaint is the wrong
one, but so what? The fact is that the link was in place and that anyone could
have been confused.
In S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000), the Panel
held that use of a link to a competitor’s web site was evidence of bad faith
registration and use pursuant to ¶ 4(b)(iii) of the Policy because it disrupts
Complainant’s business. In Disney Enterprises, Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the
Panel came to a similar conclusion, saying, “Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to paragraphs 4(b)(iii) and (iv)
of the Policy.”
Respondent has not attempted to argue that
his actions were not in bad faith. Indeed, it is surprising that he bothered to
respond at all to the Complaint seeing that he has admitted he was in the
wrong.
The Panel finds that ¶ 4(a)(iii)
of the Policy has also been proved.
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 <oneidavictor.com> domain name be TRANSFERRED
from Respondent to Complainant.
David H Tatham, Sole Panelist
Dated: October 25, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum