NATIONAL ARBITRATION FORUM

DECISION

Somerset Soup Works, Inc. v. Brandon Lester

Claim Number: FA2501002136491

PARTIES

Complainant is Somerset Soup Works, Inc. ("Complainant"), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Brandon Lester ("Respondent"), New York, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tabatchnicks.com>, registered with TLD Registrar Solutions Ltd.

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 January 23, 2025; Forum received payment on January 23, 2025.

On January 29, 2025, TLD Registrar Solutions Ltd. confirmed by e-mail to Forum that the <tabatchnicks.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 January 29, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2025 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@tabatchnicks.com. Also on January 29, 2025, 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 February 20, 2025, 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 engaged in the provision of a broad range of foods and related goods and services and has been so engaged since 1905.

2. The Complainant provides its goods and services under the trademark for TABATCHNICK. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the TABATCHNICK trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 1720497, registered on September 29, 1992 and also common law trademark rights for TABATCHNICK (collectively "the TABATCHNICK trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

3. The TABATCHNICK trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. As well as its trademark, the Complainant has registered the domain name <tabatchnick.com> that it uses in its business and in particular for its website at www.tabatchnick.com where it markets its products under the TABATCHNICK trademark and brand.

5. The Respondent registered the <tabatchnicks.com> domain name on September 17, 2024 ("the disputed domain name").

6. The disputed domain name embodies, without the consent of the Complainant, the TABATCHNICK trademark with the addition of the letter "s" and the generic Top Level Domain ".com".

7. The disputed domain name is confusingly similar to the TABATCHNICK trademark.

8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(b) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i);

(d) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii);

(e) the Respondent has used the disputed domain name to scam the Complainant's clients into making payments for invoices or deliver equipment or products on fraudulent orders under the guise of the Complainant's TABATCHNICK trademark; and

(f) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

9. The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a) the Respondent has used the disputed domain name to scam the Complainant's clients into making payments for invoices or deliver equipment or products on fraudulent orders under the guise of the Complainant's TABATCHNICK trademark and has registered the disputed domain name for that purpose and with that intention and has used the Complainant's TABATCHNICK trademark to perpetrate the aforesaid fraud;

(b) the Respondent had actual knowledge of the Complainant and its TABATCHNICK trademark when it registered the disputed domain name;

(d) the Respondent has attempted to conceal its identity by means of using a proxy service to register and use the disputed domain name; and

(e) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. The Complainant is a United States company engaged in the provision of a broad range of foods and related goods and services and has been so engaged since 1905.

2. The Complainant provides its goods and services under the trademark for TABATCHNICK. In particular, the evidence establishes that the Complainant has acquired registered trademark rights in the TABATCHNICK trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 1720497, registered on September 29, 1992 and also common law trademark rights for TABATCHNICK (collectively "the TABATCHNICK trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

3. The Respondent registered the <tabatchnicks.com> domain name on September 17, 2024 ("the disputed domain name").

4. The Respondent has used the disputed domain name to scam the Complainant's clients into making payments for invoices or deliver equipment or products on fraudulent orders under the guise of the Complainant's TABATCHNICK trademark; the emails used to perpetrate the scam are clearly designed to give the false impression that they come from the Complainant because of their content, they come via an email address that is virtually the same as the Complainant's trademark and they purport to come from employees of the Complainant.

5. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's TABATCHNICK trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

6. Accordingly, the disputed domain name should 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 evidence has established that the Complainant provides its goods and services under the trademark for TABATCHNICK. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the TABATCHNICK trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 1720497, registered on September 29, 1992 and also common law trademark rights for TABATCHNICK (collectively "the TABATCHNICK trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's TABATCHNICK trademark. The Panel finds that the disputed domain name is confusingly similar to the TABATCHNICK trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the TABATCHNICK trademark with the addition of the letter "s" and the generic Top Level Domain ".com". It is well established that where a domain name includes the entirety of trademark it is far more likely than not that the domain name is invoking the trademark, and that must be so in the present case. The addition of the letter "s" at the end of the domain name merely creates a plural version of the trademark and would undoubtedly be confusing to internet users who would naturally assume that the domain name was either a domain name of the Complainant or one that has been created with the knowledge and consent of the Complainant. The addition of the Top Level Domain ".com" is ignored in the interpretation of a domain name and cannot negate a finding of confusing similarity between a domain name and a trademark, as all domain names require such an extension.

Internet users would naturally read the disputed domain name as invoking the Complainant and its TABATCHNICK trademark.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's TABATCHNICK 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 the 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 the Complainant has made out a prima facie case that arises from the following considerations, taken in the order in which they are raised by the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name because:

(a) the Complainant has never given any licence, permission or authority to the Respondent to use the TABATCHNICK trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; this has been established by the evidence and it negates any possibility of the domain name having been registered with any consent or agreement of the Complainant;

(b) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i); this has been shown by the evidence and in particular by Exhibit D which shows a clear intention by the Respondent to use the domain name to scam the Complainant's clients into making payments for invoices or deliver equipment or products on fraudulent orders under the guise of the Complainant's TABATCHNICK trademark; the emails used to perpetrate the scam are clearly designed to give the false impression that they come from the Complainant because of their content, they come via an email address that is virtually the same as the Complainant's trademark and they purport to come from employees of the Complainant; Exhibit D consists of emails received from the Respondent, who is not an employee of the Complainant, and which are an exercise in typosquatting using a plural version of the Complainant's trademark and official domain name address and are fraudulent; the Panel has inspected the emails and although it is not necessary to set them out it is clear that they attempt to establish a financial relationship and to obtain payment and credit; there is nothing bona fide about it and the Complainant is correct in describing it as a scam;

(c) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); the Respondent is clearly using the Complainant's name and trademark unlawfully and there is no evidence that the Respondent is known by the domain name, commonly or otherwise;

(d) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate about the Respondent's conduct, it is clearly designed to make money, and it is not fair, either to the Complainant, its clients and customers or to internet users in general;

(f) the evidence shows that there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against the Respondent.

The 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, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted on several grounds that the Respondent has registered and used the disputed domain name in bad faith. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests, it is clear that the Complainant has made out all of the grounds relied on, as the Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception it has engaged in. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a) the evidence shows that the Respondent has used the disputed domain name to scam the Complainant's clients into making payments for invoices or deliver equipment or products on fraudulent orders under the guise of the Complainant's TABATCHNICK trademark and has registered the disputed domain name for that purpose and with that intention and has used the Complainant's TABATCHNICK trademark to perpetrate the aforesaid fraud;

(b) the only conclusion that can be reached on this issue is that the Respondent had actual knowledge of the Complainant and its TABATCHNICK trademark when it registered the disputed domain name; that is so because not only has the Complainant been in business under its name for many years, but it was pivotal to the Respondent's fraudulent conduct that it actually knew the name of the Complainant, its trademark and its brand; it could not have set up its scheme without having such actual knowledge;

(c) the Respondent has made deceptive and misleading use of the Complainant's TABATCHNICK trademark; this has already been established by the evidence;

(d) the Respondent has attempted to conceal its identity by means of using a proxy service to register and use the disputed domain name; this has often been accepted, correctly, as being an indication of a deceptive intent and there is no reason why that conclusion should not be reached in the present case; and

(e) all of the acts, facts, matters and circumstances that have been revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the TABATCHNICK trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

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

The Complainant has also correctly cited several prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and is entitled to the relief 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 <tabatchnicks.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: February 20, 2025