S&M NuTec, LLC v. Nicholas Knowles
Claim Number: FA0510000575653
Complainant is S&M NuTec, LLC (“Complainant”), represented by Timothy J. Feathers, of Stinson Morison Hecker LLP, 1201 Walnut, Suite 2900, Kansas City, MO 64106-2150. Respondent is Nicholas Knowles (“Respondent”), 1057 Custer Drive, Toledo, OH 43612.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <getgreenies.com>, registered with Go Daddy Software, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2005.
On October 12, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <getgreenies.com> domain name is registered with Go Daddy Software, Inc. and that 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 October 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 2005 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@getgreenies.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <getgreenies.com> domain name is confusingly similar to Complainant’s GREENIES mark.
2. Respondent does not have any rights or legitimate interests in the <getgreenies.com> domain name.
3. Respondent registered and used the <getgreenies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, S&M NuTec, LLC, is in the business of providing green toothbrush-shaped dog treats to reduce oral bacteria and tartar accumulation, freshen breath, and provide important nutrients and improved digestion to dogs. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the GREENIES mark (Reg. No. 2,388,708 issued September 19, 2000) in connection with Complainant’s dog treat products.
Respondent registered the <getgreenies.com> domain name on September 14, 2004. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website, where Respondent, without authorization, sells 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 established rights in the GREENIES mark
through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., 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.”).
This is a default proceeding which is not binding on others who may contest the validity of Complainant’s mark or Complainant’s right to a transfer of the domain name at issue. Accordingly, for the purposes of this proceeding, Respondent’s <getgreenies.com> domain name is confusingly similar to Complainant’s GREENIES mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and adds the term “get” and the generic top-level domain “.com.” The Panel finds that such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <getgreenies.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel presumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <getgreenies.com> domain name to
redirect Internet users to Respondent’s commercial website, where Respondent,
without authorization, sells Complainant’s products. Respondent’s use of a domain name that is confusingly similar to
Complainant’s GREENIES mark to redirect Internet users interested in
Complainant’s products to Respondent’s website, which sells Complainant’s
products without Complainant’s authorization is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the
respondent’s use of the disputed domain name to solicit pharmaceutical orders
without a license or authorization from the complainant does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the
complainant’s goods without the complainant’s authority, as well as others’
goods, is not bona fide use); see also Nike, Inc. v. Dias, FA
135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of
goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <getgreenies.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <getgreenies.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered a domain name that incorporates Complainant’s GREENIES mark for Respondent’s commercial gain. Respondent registered and used the <getgreenies.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential customers from Complainant to Respondent’s website by taking advantage of Internet users who are searching under Complainant’s GREENIES mark and diverting them to Respondent’s commercial website. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
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 <getgreenies.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 30, 2005
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