Taiyo International, Inc. v. Finest Lemonade c/o Name Administrator
Claim Number: FA0704000960254
Complainant is Taiyo International, Inc. (“Complainant”), represented by Robert
Curcio, of DeLio & Peterson, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <suntheanine.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 10, 2007 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@suntheanine.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <suntheanine.com> domain name is identical to Complainant’s SUNTHEANINE mark.
2. Respondent does not have any rights or legitimate interests in the <suntheanine.com> domain name.
3. Respondent registered and used the <suntheanine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Taiyo International, Inc., holds a trademark
registration with the United States Patent and Trademark Office for the
SUNTHEANINE mark (Reg. No. 2,548,957 issued
Respondent registered the <suntheanine.com>
domain name on
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 established rights in the SUNTHEANINE mark
through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO
Respondent’s
<suntheanine.com>
domain name is identical to
Complainant’s SUNTHEANINE mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety and adds the generic top-level domain
“.com.” The Panel finds that such a
minor addition to Complainant’s registered mark does not negate the confusingly
similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Porto
Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that
the panel should resolve whether a mark is identical or confusingly similar “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Blue Sky Software
Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding
that the domain name <robohelp.com> is identical to the complainant’s
registered ROBOHELP trademark, and that the "addition of .com is not a
distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established that it has rights to and legitimate interests in the SUNTHEANINE mark. Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii) the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent is using the disputed domain name to redirect
Internet users to its commercial website that features links to amino acid
products such as L-theanine, a product that competes with Complainant’s
products. Respondent’s use of a domain
name that is identical to Complainant’s SUNTHEANINE mark to redirect Internet
users interested in Complainant’s products to a website that offers links to
products that compete with Complainant’s products is not a use in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding 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); see also 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).
Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <suntheanine.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in
registering and using a domain name that is identical to Complainant’s
protected mark. Respondent is using the <suntheanine.com> domain name to redirect Internet users to Respondent’s
commercial website that features competing products. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Based on the uncontested evidence presented by Complainant,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to a website offering competing services. Respondent’s domain name incorporating
Complainant’s entire mark may create confusion as to Complainant’s affiliation
with, or sponsorship of, the disputed domain name and resulting website. Thus, Respondent’s use of the <suntheanine.com> domain name amounts
to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the complainant’s mark when
the domain name resolves to commercial websites and the respondent fails to
contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suntheanine.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 29, 2007
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