DECISION

 

Utz Quality Foods, LLC v. Ricky Osborne / Ricky J Osborne

Claim Number: FA2311002070558

 

PARTIES

Complainant is Utz Quality Foods, LLC ("Complainant"), United States of America ("United States"), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, United States. Respondent is Ricky Osborne / Ricky J Osborne ("Respondent"), Rhode Island, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <utzsnacks.shop> (the "disputed domain name"), registered with NameCheap, Inc. (the "Registrar").

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 10, 2023; Forum received payment on November 10, 2023.

 

On November 10, 2023, the Registrar confirmed by e-mail to Forum that the <utzsnacks.shop> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 November 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@utzsnacks.shop. Also on November 13, 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 December 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a well-known provider of snack food products. The Complainant first adopted the UTZ trademark in 1927 and since that date has used the UTZ trademark in connection with the sale of a wide variety of snack food products.  Complainant has received numerous registrations covering the UTZ trademark with the United States Patent and Trademark Office ("USPTO") (e.g., UTZ, United States Trademark Registration No. 878,317, registered on October 7, 1969, with a date of first use of May 30, 1927, in international classes 29 and 30) (hereinafter collectively referred to as the "UTZ Mark").  Complainant owns the domain name <utzsnacks.com>, which resolves to its official website at "www.utzsnacks.com".

 

Complainant currently offers a wide variety of products under the UTZ Mark and many other sub-brands. Through Complainant's significant promotion of snack food products offered under the UTZ Mark, consumers have come to recognize the UTZ Mark as the source of the snack food products and related retail and online retail store services. As a result, the UTZ Mark and corresponding brand have developed substantial goodwill and customer recognition, all of which predates registration of the disputed domain name.

 

Complainant contends that the disputed domain name is confusingly similar to the UTZ Mark as the addition of a term following the disputed domain name does not prevent confusing similarity. Further, Complainant claims that Respondent has no rights or legitimate interest in respect of the disputed domain name since the registration of a domain name for the purpose of diverting online traffic premised on consumer confusion is not a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent diverted Complainant's customers to a third-party website and intentionally attempted to attract Internet users to its own website for commercial gain by creating a likelihood of confusion with the UTZ Mark.

 

The disputed domain name was registered on June 28, 2023, and resolves to Respondent's website at "www.utzsnacks.shop".  The website features images of Complainant's goods, including those offered under the UTZ Mark as well as those offered under sub-brands owned by Complainant. Respondent offers Complainant's goods to lead Internet users to believe that they have in fact arrived at Complainant's official website. Thus, consumers are likely to be confused and possibly attempt to purchase products. Therefore, the Panel finds that the disputed domain name is confusingly similar to the UTZ Mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant has registered trademark rights in the UTZ Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant's UTZ Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

 

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 disputed domain name should be cancelled or transferred:

 

(1)       the disputed 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 disputed domain name; and

(3)       the disputed domain name was 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 Panel finds that Complainant has rights in the UTZ Mark through its registration with the USPTO (e.g., United States Registration No. 878,317, registered on October 7, 1969, with a date of first use of May 30, 1927, in international classes 29 and 30). Registration of a trademark with the USPTO is sufficient to establish rights in a mark under Policy paragraph 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish complainant's rights in the HOME DEPOT mark).

 

The Panel also finds that Respondent's disputed domain name is confusingly similar to the UTZ Mark under Policy paragraph 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, followed by the term "snacks", and then followed by the ".shop" generic Top-Level Domain ("gTLD").  The addition of a term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy paragraph 4(a)(i).¹ See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) ("Respondent merely adds the term 'supports' and a '.org' gTLD to the DELL mark. Thus, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's DELL mark per Policy ¶ 4(a)(i).").

 

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").

 

As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond.

 

Here, the Panel holds that Complainant has made out a prima facie case.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the UTZ Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement from or association with Complainant.

 

Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that mimics Complainant's official website, offering Complainant's snack products, using the UTZ Mark, and leading Internet users to believe that they have arrived at Complainant's site. Such registration of a domain name for the purpose of diverting online traffic premised on consumer confusion is not a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). Finally, Respondent does not use the disputed domain name for legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii) because Respondent uses the domain name to perpetuate a scheme that involves deceiving consumers seeking Complainant and its snack products and diverting them to its own website while attempting to appear as though they emanate from Complainant and its official website.

 

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

The Panel concludes that Respondent registered and is using the disputed domain name in bad faith as set forth below.

 

First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent's website or online location by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website or online location is evidence of registration and use in bad faith. Bad faith under Policy paragraph 4(b)(iv) can be found where, as here, a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Second, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the UTZ Mark. Actual knowledge of a complainant's mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy paragraph 4(a)(iii). Moreover, it strains credulity to think that Respondent did not have actual knowledge of Complainant's UTZ Mark or of Complainant. Prior knowledge of a complainant's trademark and use of a disputed domain name that incorporates the trademark is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware" of the complainant's mark at the time of registration).

 

Third, Complainant claims that Respondent registered and was using the disputed domain in bad faith as Respondent attempted to pass off as Complainant for Respondent's commercial gain. Use of a disputed domain name in connection with passing off to commercially benefit a respondent can evince bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy paragraph 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.").

 

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.

 

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 <utzsnacks.shop> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dated: December 10, 2023