Walkers Shortbread Limited and Walkers Shortbread, Inc. v. Domain Holdings
Claim Number: FA0705000985160
Complainants are Walkers Shortbread Limited and Walkers
Shortbread, Inc. (collectively, “Complainant”), represented by Perla
M. Kuhn, of Hughes Hubbard & Reed LLP, One
Battery Park Plaza, New York, NY 10004.
Respondent is Domain Holdings (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <walkershortbread.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2007.
On May 15, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <walkershortbread.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 May 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@walkershortbread.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <walkershortbread.com> domain name is confusingly similar to Complainant’s WALKERS mark.
2. Respondent does not have any rights or legitimate interests in the <walkershortbread.com> domain name.
3. Respondent registered and used the <walkershortbread.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Walkers
Shortbread Limited and its subsidiary incorporated in the United States,
Walkers Shortbread, Inc., holds trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the WALKERS mark (e.g., Reg. No.
1,633,329 issued January 29, 1991 and Reg. No. 3,020,765 issued November 29,
2005). Complainant has used the WALKERS
mark in connection with the creation and sale of its baked goods, including
shortbreads, biscuits, cookies and oatcakes.
Beginning in
Respondent registered the <walkershortbread.com> domain name on January 26, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website selling similar baked goods as those offered under Complainant’s mark. Respondent is also using the <walkershortbread.com> domain name to sell Complainant’s own products without Complainant’s permission.
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 WALKERS mark
pursuant to Policy ¶ 4(a)(i) through registration of
the mark with the USPTO. These rights
are further supported by Complainant’s continuous use of the mark since at
least 1995 and its registration of the <walkersshortbread.com> domain
name. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <walkershortbread.com> domain name is confusingly similar to Complainant’s WALKERS mark as it
uses the mark in its entirety and removes the “s” from the mark and then adds
the descriptive word “shortbread” to the mark.
One of Complainant’s primary goods sold under the WALKERS mark is
shortbread. Therefore, the Panel finds
that Respondent’s use of the word “shortbread” is confusingly similar to
Complainant's WALKERS mark as it describes Complainant. Additionally, the Panel finds that the
deletion of the “s” from Complainant’s WALKERS mark is a minor misspelling of
the mark that does not sufficiently distinguish the domain name to avoid a
finding of confusing similarity under Policy ¶ 4(a)(i). See Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also Parfums Christian Dior v. 1
Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
Respondent’s <walkershortbread.com> domain name also adds the generic top-level domain (“gTLD”) “.com” to the mark. Panels have previously held, as the Panel holds here, that the addition of a gTLD is not relevant in determining whether a domain name is confusingly similar. See 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <walkershortbread.com> domain name. Complainant’s submission establishes a prima facie case which shifts the burden to Respondent to show that Respondent does have rights or legitimate interests in the disputed domain name under 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”).
The Panel assumes that Respondent has no rights or legitimate
interests here because Respondent has failed to respond to the Complaint. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will consider all evidence
before determining whether Respondent has rights or legitimate interests in the
<walkershortbread.com>
domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the <walkershortbread.com> domain name to
redirect Internet users to Respondent’s website offering competing goods and
services to those offered by Complainant.
Respondent is also using the disputed domain name to sell Complainant’s
goods without the permission of Complainant.
The Panel finds that Respondent’s use of the <walkershortbread.com> domain name to redirect Internet
users to Respondent’s website in order to sell its own products is not a use in
connection with a bona fide offering of goods and services under Policy
¶ 4(a)(i), or a legitimate noncommercial or fair use under Policy ¶
4(a)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the
complainant’s perfume, as well as other brands of perfume, is not bona fide
use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
Additionally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <walkershortbread.com> domain name. Respondent’s WHOIS information identifies Respondent as “Domain Holdings.” Therefore, the Panel finds that Respondent has failed to show that it is commonly known by the <walkershortbread.com> domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“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.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Finally, Respondent’s <walkershortbread.com> domain name capitalizes on a common misspelling of Complainant’s WALKERS mark and its <walkersshortbread.com> domain name because it simply removes the “s” from the WALKERS mark. Therefore, the Panel finds that Respondent is using the <walkershortbread.com> domain name to catch those Internet users attempting to find Complainant’s products but mistype Complainant’s <walkersshortbread.com> domain name into their browser. The Panel finds that such use constitutes typosquatting, which is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has registered and is using the <walkershortbread.com> domain name, which is confusingly similar to Complainant’s WALKERS mark, to redirect Internet users to Respondent’s website offering goods in direct competition with Complainant's goods under the WALKERS mark. The Panel finds that Respondent’s use of the disputed domain name to compete with Complainant’s goods and services constitutes disruption, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is using the <walkershortbread.com>
domain name to redirect Internet users to its website offering competing goods
and services with Complainant as well as selling Complainant’s goods without
Complainant’s consent, both for the assumed profit of Respondent. The Panel finds that Internet users in search
of Complainant’s goods may become confused as to Complainant’s affiliation with
Respondent’s website, particularly since it sells Complainant’s products. Presumably, Respondent is profiting from this
confusion. Therefore, the Panel finds
that Respondent’s use of the <walkershortbread.com>
domain name to redirect Internet users to Respondent’s competing website is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
Finally, Respondent’s <walkershortbread.com> domain name constitutes a common misspelling of Complainant’s WALKERS mark and <walkersshortbread.com> domain name. Respondent’s registration of the disputed domain name capitalizes on a common misspelling of the mark by leaving out the “s” in WALKERS in order to redirect Internet users to Respondent’s website. The Panel finds that Respondent’s registration of the <walkershortbread.com> domain name constitutes typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walkershortbread.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 27, 2007
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