Harry And David, LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2307002052398
Complainant is Harry And David, LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wolferman.com>, registered with Media Elite Holdings Limited.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on July 10, 2023; Forum received payment on July 10, 2023.
On July 12, 2023, Media Elite Holdings Limited confirmed by e-mail to Forum that the <wolferman.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 July 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2023 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@wolferman.com. Also on July 14, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant’s predecessor in title commenced use of the WOLFERMAN’S mark in connection with the creation, advertising, distribution and sale of baked goods since 1888. In 2008 the WOLFERMAN’S brand and product line was acquired by, and merged with Complainant Harry and David LLC. Complainant has rights in the WOLFERMAN’S mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,169,739, registered June 30, 1998). The disputed domain name is confusingly similar to Complainant’s mark as it contains the WOLFERMAN’S mark in its entirety, merely deleting the letter “s” and adding the generic top-level domain (“gTLD”) “.com.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the WOLFERMAN’S mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Respondent’s unauthorized use of the WOLFERMAN’S trademark and redirection of the domain to Complainant’s website cannot be deemed a bona fide offering of goods or services.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent redirects the disputed domain to Complainant’s website. Respondent intentionally attempts to attract, for commercial gain, Complainant’s customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Respondent was aware of Complainant’s trademark rights. Respondent’s hiding of its identity is evidence of its bad faith registration and use. Respondent has not replied to Complainant’s cease-and-desist letters and continues to resolve the domain name to Complainant’s website, which demonstrates Respondent’s bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on August 29, 2000.
2. Complainant has established rights in the WOLFERMAN’S mark based upon registration with the USPTO (e.g., Reg. No. 2,169,739, registered June 30, 1998).
3. Respondent redirects the disputed domain to Complainant’s website.
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 asserts rights in the WOLFERMAN’S mark based upon registration with the USPTO (e.g., Reg. No. 2,169,739, registered June 30, 1998). Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). Complainant has provided evidence of registration of the WOLFERMAN’S mark with the USPTO. Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant contends the disputed domain name <wolferman.com> is confusingly similar to Complainant’s mark as it contains the WOLFERMAN’S mark in its entirety, merely deleting the letter “s” and adding the generic top-level domain (“gTLD”) “.com.” The Panel observes that changing from a plural to a singular word (or the other way around) by the removal or addition of the letter “s” creates a domain name that is confusingly similar to a corresponding trademark. See Technologies Inc v. Richard Alexander Smith, D2001-0164 (WIPO June 4, 2001) (“Of course, it is trite law and basic common sense that the mere change from singular to plural or vice versa is not sufficient to avoid confusion for trade mark purposes or passing off purposes. No one could expect to survive very long in the automotive field using the trade mark GENERAL MOTOR by arguing that it is singular and thus not confusing with the plural version.”); see also Schneider Electric SE v. Meg Thayer, D2023-1527 (WIPO June 27, 2023) (“Respondent has taken the SCHNEIDER ELECTRIC Trademark in its entirety, and added a plural ‘s’ to ‘Schneider’ followed by a hyphen, which does not prevent a finding of confusing similarity between the disputed domain name and the SCHNEIDER ELECTRIC Trademark.”). The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s WOLFERMAN’S 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), then the burden shifts to Respondent to show 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 argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the WOLFERMAN’S mark. When response is lacking, relevant Whois information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 1919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The unmasked Whois information of record identifies “Domain Administrator / Fundacion Privacy Services LTD” as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant then argues that Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Respondent’s unauthorized use of the WOLFERMAN’S trademark and redirection of the domain to Complainant’s website in an attempt to pass itself off as Complainant cannot be deemed a bona fide offering of goods or services. The Panel finds that a simple redirection or forwarding of a domain name to Complainant’s controlled website does not grant Respondent rights or a legitimate interest in the disputed domain name and it cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. See Altavista Co. v. Brunosousa , D2002-0109 (WIPO April 3, 2002) (where the panel found that respondent “has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”). The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent creates a likelihood of confusion with Complainant and its WOLFERMAN’S mark by registering a domain name that incorporates the mark and auto-redirects users to Complainant’s own website to earn affiliate revenue. In this activity, Respondent is obviously targeting and leveraging the value of the longstanding WOLFERMAN’S mark. It is well established that such conduct constitutes bad faith. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also WordPress Foundation v. Berat Berisha, FA 1657211 (Forum Mar. 1, 2016) (bad faith found where the disputed domain name resolves to Complainant’s own webpage); see also Amgen, Inc. v. Alan Samuel, FA 1804634 (Forum Sept. 27, 2018) (respondent’s redirection of the disputed domain name back to Complainant’s website found to support a finding of bad faith registration and use). The Panel therefore finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Complainant further contends that at the time of registration, Respondent was aware of Complainant’s trademark because Respondent’s only use of the disputed domain name was to redirect the domain to Complainant’s website. The Panel infers that Respondent had knowledge of Complainant’s rights in the WOLFERMAN’S mark at the time of registering the disputed domain name, due to the notoriety of Complainant’s mark and the redirection of the disputed domain name to Complainant’s website. The Panel thus finds that Respondent registered the disputed domain in bad faith under 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 <wolferman.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 8, 2023
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