DECISION

 

Krasdale Foods, Inc. v. Tyler Brown

Claim Number: FA2310002067204

PARTIES

Complainant is Krasdale Foods, Inc. ("Complainant"), represented by Jess M. Collen of Rothwell, Figg, Ernst & Manbeck P.C., New York, USA. Respondent is Tyler Brown ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <krasdalefoodsinc.com>, registered with NameCheap, Inc..

 

PANEL

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 20, 2023; Forum received payment on October 20, 2023.

 

On October 21, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <krasdalefoodsinc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@krasdalefoodsinc.com. Also on October 26, 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 November 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

 

1.       The Complainant is a United States company which for over 100 years has been engaged in business as an independent grocery wholesaler and in the provision of related goods and services.

 

2.       The Complainant has rights in the KRASDALE trademark registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on September 11, 2012 as Registration No. 4206057, and other trademarks for KRASDALE and similar and derivative marks registered with the USPTO for a wide variety of foods and other goods and services, all prior to the registration of the disputed domain name (collectively "the KRASDALE trademark").

 

3.       The Complainant is also the owner of the domain name <krasdalefoods.com> and other domain names which it uses in its business as official domain names and for its website.

 

4.       The Respondent registered the <krasdalefoodsinc.com> domain name on August 15, 2023 ("the disputed domain name").

 

5.       In so doing, the Respondent incorporated in the disputed domain name the Complainant's KRASDALE trademark without any authority so to do.

 

6.       The Respondent has not used the disputed domain name for a website but has caused and allowed it to be used without authorization for a webpage stating that "This domain has recently been registered with Namecheap" with links to several commercial offerings.

 

7.       By reason of the matters aforesaid, the disputed domain name is virtually identical and/or confusingly similar to the KRASDALE trademark.

 

8.       (a) The Respondent has not used or made demonstrable preparations to use the domain name for a bona fide offering of good or services;

 

(b) the Respondent has not been commonly known by the domain name;

 

(c) on or about October 17, 2023, the Complainant became aware of the registration and unauthorized use of the domain name by the Respondent;

 

(d) the Respondent has not used the domain name for a website but has caused and allowed it to be used without authorization for a webpage stating that "This domain has recently been registered with Namecheap" with links to several commercial offerings;

 

(e) the Respondent has not made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the KRASDALE trademark; and

 

(f) the unauthorized use of the KRASDALE trademark and name on Respondent's webpage may lessen the capacity of the KRASDALE trademark to identify the Complainant's legitimate products.

 

9.       By reason of the matters aforesaid the Respondent has no rights or legitimate interests in the disputed domain name.

 

10.       (a) At the time the Respondent registered the disputed domain name it had actual notice of the Complainant, its KRASDALE trademark and its use in the Complainant's business;

 

(b) the Respondent registered the domain name for the purpose of disrupting the Complainant's business;

 

(c) by using the domain name, the Respondent intended to cause confusion with the KRASDALE trademark;

 

(d) by using the domain name, the Respondent intentionally attempted to attract for commercial gain, internet users to Respondent by registering the Complainant's name as a domain name and holding itself out to be a legitimate business in the name of "Krasdale Foods";

 

(e) Respondent's fraudulent use of the KRASDALE trademark shows an intention to attract internet users by creating a likelihood of confusion as to affiliation, source, or sponsorship with Complainant. Through its unauthorized ownership of the domain name, Respondent could alter content on the webpage to which the domain name resolves and create email addresses to communicate with Complainant's customers and potential customers.

 

(f) Respondent's use of the domain name is an unlawful attempt to defraud internet users by posing as Complainant. 

 

11.       By reason of the matters aforesaid, the Respondent has registered and used the disputed domain name in bad faith.

 

12.       The Complainant submits that it has established the elements to be proved under the Policy and that, accordingly, the disputed domain name should be transferred to the Complainant.

 

B. Respondent

    Respondent failed to submit a Response in this proceeding

 

FINDINGS

 

1.       The Complainant is a United States company which, for over 100 years has been engaged in business as an independent grocery wholesaler and in the provision of related goods and services.

2.       The Complainant has established its rights in the KRASDALE trademark registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on September 11, 2012 as Registration No. 4206057, and other trademarks for KRASDALE and similar and derivative marks registered with the USPTO for a wide variety of foods and other goods and services, all prior to the registration of the disputed domain name (collectively "the KRASDALE trademark").

3.       The Respondent registered the <krasdalefoodsinc.com> domain name on August 15, 2023 ("the disputed domain name").

4.       The disputed domain name is confusingly similar to the Complainant's KRASDALE trademark.

5.       The Respondent has no rights or legitimate interests in the disputed domain name.

6.       The Respondent has registered and used the disputed domain name in bad faith.

7.       The Complainant has established the elements required to be proved under the Policy and the disputed domain name should therefore be transferred to the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

 

The first question that arises is whether the Complainant has rights in a

trademark or service mark on which it may rely. The evidence shows that Complainant has established its rights in the KRASDALE trademark registered in the name of the Complainant with the United States Patent and Trademark Office ("USPTO") on September 11, 2012 as Registration No. 4206057, and other trademarks for KRASDALE and similar and derivative marks registered with the USPTO for a wide variety of foods and other goods and services, all prior to the registration of the disputed domain name (collectively "the KRASDALE trademark").

 

The Complainant has adduced evidence of the foregoing registrations constituting the KRASDALE trademark as defined, which the Panel has examined and which it finds show that each of those trademarks has been validly registered. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark, which is the element that it must prove and which it has established. Since the Complainant has registered and has established its rights in the KRASDALE trademark through its widespread registration and use of the mark over a long period of time, the Panel finds that the Complainant has rights in the KRASDALE trademark under Policy ¶ 4(a)(i).

 

The evidence also shows that each of the trademarks going to make up the KRASDALE trademark was registered prior to the registration of the disputed domain name by the Respondent on August 15, 2023.

 

The next question that arises is whether the disputed domain names is identical or confusingly similar to Complainant's registered KRASDALE trademark. In that regard, the task of the Panel is to take the domain name, compare it to the trademark and decide if the domain name is identical to the trademark or, if not, whether it is similar to the trademark and confusingly so. The Panel has performed that task. The domain name is <krasdalefoodsinc.com> and the trademark is KRASDALE. The Complainant is correct in submitting that "Confusion (between the two) is inevitable". That is so because the Respondent has incorporated the whole of the KRASDALE trademark in the domain name, making the trademark the dominant feature of the domain name and adding only the generic words "foods" and "inc" and the gTLD ".com". The word "foods" cannot negate a finding of confusing similarity but, rather, it strengthens such a finding, as it must be widely known by internet users that the trademark relates to that very subject. The inclusion of the word "inc" merely signifies that the owner of the trademark is an incorporated entity, which internet users would also widely understand to be the case. The inclusion of the gTLD produces the same result. Prior UDRP Panels have routinely held over many years that the addition of a Top Level Domain to a trademark does not negate the likelihood of confusion with the trademark in question. That is so because all domain names require a Top Level Domain and in the final analysis the question is whether the relevant domain name is confusingly similar to the relevant trademark, which in the present case it is.

 

Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the well-known Complainant, its KRASDALE trademark and its use either by the Complainant or with the approval of the Complainant. There is also a lot to be said for the Complainant's point that the terms KRASDALE and KRASDALE FOODS are recognized as identifying the Complainant and its activities. The conclusion must therefore be that the domain name is similar to the trademark and confusingly so.

 

The Panel therefore finds that the Respondent's domain name is confusingly similar to the Complainant's KRASDALE trademark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that the 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) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take the Complainant's KRASDALE   trademark and to use it in its domain name, adding only the generic words "foods" and "inc" and the gTLD ".com", none of which negates the confusing similarity between the domain name and the trade mark, generating the clear impression that it is referring to and invoking the KRASDALE trademark for its own purposes and that it is authorized to do so.

 

(b) Respondent registered the disputed domain name on August 15, 2023, which it had no right to do and no legitimate interest in doing so.

 

(c) The evidence shows that the Respondent has not used or made demonstrable preparations to use the domain name for a bona fide offering of good or services. Clearly there is no evidence that the Respondent has actually used the domain name for a bona fide offering of goods or services. Moreover, far from there being evidence that the Respondent has done this, the inference that arises from the registration of the domain name is that the Respondent had and probably still has the intention of using it for an entirely illegitimate purpose if it can do so.

 

(d) The Respondent has not used the disputed domain name for a website but has caused and allowed it to be used without authorization for a webpage stating that "This domain has recently been registered with Namecheap" with links to several commercial offerings.

This is shown clearly by the evidentiary material prepared by the Complainant and annexed to the Complaint as Exhibit D which shows the brazen adoption by the Respondent of the Complainant's trademark and its use to provide links at the behest of Name Cheap to other commercial offerings.

 

(e) the evidence shows that the Respondent has not been commonly known by the domain name and nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name or in any other way.

 

(f) the evidence shows that the Respondent has not made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert consumers misleadingly or to tarnish the KRASDALE trademark. The use of the domain name so far cannot be said to be legitimate, as it cannot be legitimate to take a trademark without permission and use it as the Respondent has done. Nor is that use noncommercial as it is clearly intended to be used by the Respondent to make money, which is commercial in every way. Nor is it fair in any sense of the word to take a trademark without permission and use it as the Respondent has done, including to pretend that it was authorized to do so when it must have known that it was not so authorized.

 

(g) the Complainant has submitted that the unauthorized use of the KRASDALE trademark and name on Respondent's webpage may lessen the capacity of the KRASDALE trademark to identify the Complainant's legitimate products. The Panel agrees. In fact, on the balance of probabilities, it would lessen that capacity.

 

(h) The evidence also shows, as the registration of the domain name was unauthorized, that any future use of the domain name on Respondent's webpage will lessen the capacity of the KRASDALE trademark to identify the Complainant's legitimate products.

 

(i) The evidence also shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register the domain name or to use the KRASDALE trademark in any way.

 

(j) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.

 

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 does not have a right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on general grounds of bad faith as well as the specific grounds articulated in the Policy.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, the circumstances in the present case all show that the Respondent has been engaged in the improper registration and use of the disputed domain name in bad faith. The element of registration that must be proved is self-evident because the domain name has been registered, and without permission, and that is bad faith. The element of use is met by the Respondent causing and allowing the domain name to be used by Name Cheap for links and advertisements, enabling the Respondent to do what it no doubt wants to do, which is to notify internet users that it is entitled to use the KRASDALE trademark and that it authorized to do so, neither of which is true. In other words, the Respondent is using the domain name to perpetrate a fraud on the public. Moreover, the irresistible inference is that the use of the domain name is to prepare for some nefarious activity and to trade on the Complainant's trademark, name, product names and its own official domain name to achieve that end. There is only one way to characterize those actions and the Respondent's obvious intention and that is to characterize them as bad faith.   

 

Secondly, the Complainant submitted, and the Panel finds on the evidence, that the Complainant has established that it has owned the KRASDALE trademark for many years and well before the Respondent registered the disputed domain name.

 

Thirdly, the Complainant has submitted persuasive evidence showing that the clear intention of registering the domain name and displaying it on the internet was to give the false impression that the registration and its exposure on the internet were being done with the approval of the Complainant and that the Respondent was entitled to use the trademark and the domain name and to trade on them to make money. Indeed, the conduct of the Respondent was tantamount to posing as and passing itself off as the Complainant. Again, that is bad faith.

 

Fourthly, the evidence shows that at the time the Respondent registered the disputed domain name it had actual notice of the Complainant, its KRASDALE trademark and its use in its business. That is so because the Respondent could scarcely have registered and used the domain name on a whim or by accident and it must therefore have known exactly what it was doing and the famous name and standing of its target.

 

Fifthly, there is an irresistible inference that the Respondent registered the domain name for the purpose of disrupting the Complainant's business within the meaning of Policy ¶4 (b) (iii).

 

Sixthly, the evidence is that by using the domain name the Respondent intended to cause confusion with the KRASDALE trademark as to the legitimacy of the domain name location within the meaning of Policy ¶4(b)(iv). Indeed, the Respondent's use of the domain name is an unlawful attempt to defraud internet users by posing as Complainant. 

 

Finally, in addition to the specific provisions of the Policy showing bad faith and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration and use of the disputed domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish and is entitled to the relief that it seeks.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <krasdalefoodsinc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: November 17, 2023