Traditional Medicinals Inc. v. Cimino Brothers Produce
Claim Number: FA0902001247727
Complainant is Traditional Medicinals Inc. (“Complainant”), represented by Jay
H. Geller, of Jay H. Geller a Prof. Corp.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mothersmilk.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2009.
On February 17, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mothersmilk.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2009 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@mothersmilk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <mothersmilk.com> domain name is identical to Complainant’s MOTHER’S MILK mark.
2. Respondent does not have any rights or legitimate interests in the <mothersmilk.com> domain name.
3. Respondent registered and used the <mothersmilk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant registered the MOTHER’S MILK mark with the United States Patent and Trademark Office (“USPTO”) on January 31, 1984 (Reg. No. 1,265,889).
Respondent registered the <mothersmilk.com> domain name on August 12, 2004. There is no affirmative evidence in the record of the use of the disputed domain name.
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.
The Panel finds that Complainant has rights in the MOTHER’S
MILK mark under Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also
Complainant contends that the <mothersmilk.com> domain name is identical to its MOTHER’S MILK mark. The <mothersmilk.com> domain name differs from Complainant’s MOTHER’S MILK mark in three ways: (1) the apostrophe has been removed from the mark; (2) the space between the terms of the mark has been removed; and (3) the generic top-level domain (gTLD) “.com” has been added to the end of the mark. The Panel agrees with previous panels that have found that none of these alterations sufficiently distinguish a disputed domain name. The first two changes do not distinguish a domain name because no domain name can contain spaces or punctuation. See Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark.). Similarly, the addition of the gTLD “.com” fails to distinguish a domain name from a mark because all domain names must contain TLDs. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Therefore, the Panel finds that, despite the changes made, the disputed domain name remains identical to Complainant MOTHER’S MILK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because of the
reasons the Panel gives in its discussion of Policy ¶ 4(a)(iii),
the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the
complainant must prove all three elements under the Policy, the complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary); see also VeriSign Inc. v. VeneSign
Complainant claims that Respondent has registered the disputed domain name in bad faith. However, there is no allegation or evidence demonstrating the use or non-use of the disputed domain name. Thus, the Panel cannot make a finding of bad faith on the merits of the case. As such, the Panel is unable to make a finding regarding bad faith registration and use, and will therefore not make such a finding under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mothersmilk.com> domain name be RETAINED by Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 6, 2009
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