New Haven Farms, Inc. v. van huy tran
Claim Number: FA1906001846746
Complainant is New Haven Farms, Inc., (“Complainant”), represented by Fatima Lahnin, Connecticut, USA. Respondent is van huy tran (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newhavenfarms.org>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2019; the Forum received payment on June 6, 2019.
On June 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <newhavenfarms.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newhavenfarms.org. Also on June 13, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant is a nonprofit organization that, since as early as 2011, has worked to improve the health and vitality of individuals and families through its farm-based wellness programs. Complainant has exclusive common law rights in the trademark NEW HAVEN FARMS dating back to at least as early as 2011. In fact, Complainant is the original owner of the <newhavenfarms.org> domain name and Respondent only acquired it after Complainant inadvertently allowed the domain name registration to lapse. Additionally, Respondent’s <newhavenfarms.org> domain name is identical to Complainant’s mark as it eliminates the spaces and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <newhavenfarms.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to resolve to a web site that mimics Complainant’s former web site at the domain and impersonates Complainant. Additionally, some of the information on the resolving webpage relates to marijuana, which harms Complainant’s business reputation.
Respondent registered and uses the <newhavenfarms.org> domain name in bad faith. Respondent uses the domain name to pass itself off as Complainant and cause consumer confusion, while disrupting Complainant’s business through the offering of marijuana related information. Further, in an attempt to profit from its actions, the Respondent sought to sell the disputed domain name for US$1,500 which exceeds its out-of-pocket registration costs for the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims it holds common law rights in the NEW HAVEN FARMS mark as it does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant provides the following to support its argument: (1) Complainant has grown over 80,000 lbs. of organic produce for individuals and families with limited access to fresh food; (2) Complainant has used the mark continuously since at least as early as 2011 including its use in the now-disputed <newhavenfarms.org> domain name and the domain’s resolving website that featured information about Complainant’s enterprise; (3) Complainant has prominently and extensively used, promoted, and advertised the NEW HAVEN FARMS mark; (4) the mark has become well recognized by consumers as designating Complainant as the source of the farm-based wellness programs it provides; and, (5) Complainant has received significant media recognition and has won a national prestigious award. Complainant also notes that Respondent only acquired the domain name after Complainant inadvertently allowed the domain name registration to lapse. In view of this evidence and the lack of any Response or counter-argument from the Respondent, the Panel accepts Complainant’s assertions and finds that it does hold common law rights in the NEW HAVEN FARMS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <newhavenfarms.org> domain name is identical to Complainant’s mark as it eliminates the spaces and adds the “.org” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). The Panel therefore finds that the <newhavenfarms.org> domain name is identical to the NEW HAVEN FARMS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <newhavenfarms.org> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”) The WHOIS record for the disputed domain name identifies “van huy tran” as the registrant, and nothing in the record indicates that Respondent is known otherwise or that it was authorized to use the mark for any purpose. Accordingly, the Panel finds that Respondent is not commonly known by the <newhavenfarms.org> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent uses the domain name to resolve to a web site that mimics Complainant’s web site and impersonates Complainant. Using a confusingly similar domain name to pass oneself off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides screenshots of the resolving webpage which displays the NEW HAVEN FARMS mark in the form of Complainant’s own graphic logo, photographs that are identical to those of Complainant’s former website, and which also provides information relating to Complainant’s services. Complainant also submits dated, archival screenshots of the disputed domain’s website (while the domain was under Complainant’s ownership) showing substantially similar material. I light of this evidence, it is clear to the Panel that the Respondent has copied the Complainant’s former website and made some modifications in an attempt at passing itself off as Complainant. Thus, the Panel finds that Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and/or (iii) and that there is no basis upon which to find that it has acquired any rights or legitimate interests in the domain under Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the domain name to pass itself off as Complainant and cause consumer confusion, while disrupting Complainant’s business through the offering of marijuana related information. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). The Panel notes that Complainant provides screenshots of the resolving webpage, which displays the NEW HAVEN FARMS mark and logo, images that were copied from Complainant’s former site, and which provides information relating to Complainant’s services. Complainant also provides what are allegedly historical screenshots of the domain name, which show substantially similar material. Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
As for Complainant’s claim that Respondent sought to sell the disputed domain name at a price in excess of its out-of-pocket registration costs, the Panel notes that the evidence of record suggests that a negotiation took place for the sale of the domain but that it is otherwise somewhat vague and inconclusive. As such, and in light of the other evidence to support Complainant’s claim under Policy ¶ 4(a)(iii) that is found in this case, the Panel determines that it is not necessary to consider this additional basis for finding bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newhavenfarms.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 9, 2019
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