DECISION

 

Somerset Soup Works, Inc. v. Katrina Johnson

Claim Number: FA2501002136496

 

PARTIES

Complainant is Somerset Soup Works, Inc. ("Complainant"), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Katrina Johnson ("Respondent"), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tabatchnickfinefood.com>, registered with NameSilo, LLC.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2025; Forum received payment on January 23, 2025.

 

On January 23, 2025, NameSilo, LLC confirmed by e-mail to Forum that the <tabatchnickfinefood.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 27, 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@tabatchnickfinefood.com. Also on January 27, 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 19, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response or any other submittals from the Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant produces and distributes over 30 varieties of hearty soups and broths. It has rights in the TABATCHNICK mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and in other jurisdictions. Respondent's <tabatchnickfinefood.com> domain name is confusingly similar to Complainant's TABATCHNICK trademark because it incorporates the mark in its entirety, merely adding the terms "fine food" and the ".com" generic top-level domain ("gTLD").

 

Respondent has no rights or legitimate interests in the domain name. It is not affiliated with Complainant and Complainant has not authorized it to use its mark, it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it for an email account with which it impersonates and attempts to defraud Complainant by ordering supplies for itself under Complainant's account, and Respondent has not been commonly known by the domain name.

 

Respondent registered and uses the domain name in bad faith. It registered the domain name with actual and constructive knowledge of Complainant and its mark, it is using the domain name for an email account which it uses to impersonate and defraud Complainant by ordering supplies for itself under Complainant's account, and it registered the domain name with a privacy service.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The TABATCHNICK mark was registered to Complainant with the USPTO (Reg. No. 1,720,497) on September 29, 1992 (USPTO registration certificate included in Complaint Exhibit B). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). 

 

Respondent's <tabatchnickfinefood.com> domain name is confusingly similar to Complainant's TABATCHNICK trademark. It incorporates the mark in its entirety, merely adding the descriptive terms "fine food" and a gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) ("The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant's offerings, and in the cases of , and , the added gTLD adds to the confusion…."), The Regents of the University of Michigan v. Jason Ferrantello, FA 2019913 (Forum Dec. 29, 2022) ("[I]t is well established that a gTLD, such as <.com> is generally irrelevant in the assessment of the likelihood of confusion."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain name involved here. The expression "fine food" describes in a general way the Complainant's stock in trade. Adding these terms to Complainant's mark in the domain name enhances the confusing similarity. PADI Americas, Inc. v. MPM Administration, FA 1783415 (Forum May 22, 2018) (finding the <padivacations.com> domain name to be confusingly similar to the complainant's PADI mark: "the inclusion of the suggestive term 'vacations' in the at-issue domain name only adds to any confusion between the domain name and Complainant's trademark since the term suggests Complainant's travel related services.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the TABATCHNICK mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not affiliated with Complainant and Complainant has not authorized it to use its mark, (ii) it is not is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses it for an email account with which it impersonates and attempts to defraud Complainant by ordering supplies for itself under Complainant's account, and (iii) Respondent has not been commonly known by the domain name.  These allegations are addressed as follows:

 

Complainant states that Respondent is not affiliated with it and that it has not licensed or authorized Respondent to use its mark. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Complaint Exhibit D consists of a series of emails in which persons identifying themselves as Billy Kiraly and John Eberts, purportedly acting on behalf of Complainant and using the purchasing@tabatchnickfinefood.com email address, engage with a supplier for the purchase of toilet tissue. These emails display Complainant's logo and a company signature block with Complainant's correct street address. The vendor ultimately questioned the transaction and an actual loss was averted, but it is clear that Respondent was impersonating Complainant for fraudulent purposes, ordering supplies which would likely be shipped to Respondent, with the invoices going to Complainant. Using a confusingly similar domain name to impersonate a complainant and send fraudulent emails is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iii)"), Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent's use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The WHOIS information submitted to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).  The Panel is satisfied that the Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(iii).

 

The evidence furnished by Complainant establishes the required prima facie case.  On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use of the domain name. First, Respondent registered and is using the confusingly similar domain name for an email account which it uses fraudulently to impersonate and attempt to purchase supplies for its own use at the expense of Complainant. This does not fit within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and the registration and use of a confusingly similar domain name to pass off as a complainant and perpetrate a fraudulent scheme evidences bath faith registration and use. TABATCHNICK Corp. v. Trey Andrews / lockheedmartinmd, Case No. FA 1748885 (Forum Oct. 20, 2017) ("Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages attempting to defraud Complainant or its vendors by exploiting that confusion, is indicative of bad faith under paragraph 4(b)(iv)."), Hewlett-Packard Development Company, L.P. v. Hyatt, FA 1818756 (Forum Dec. 28, 2018) ("using a domain name to pose as a complainant to promote a fraudulent scheme has often been held to constitute bad faith").

 

Complainant asserts that Respondent had at least constructive knowledge of Complainant and its mark when it registered the domain name. UDRP panels almost universally decline to find bad faith based upon constructive knowledge and this Panel does as well.  The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in December 2024 (WHOIS printout submitted as Complaint Exhibit C shows creation date). Complainant's TABATCHNICK mark had been used by Complainant since at least as early as the June 1963 first use date shown on the USPTO registration certificate included in Complaint Exhibit B. More importantly, Respondent had to have had actual knowledge of Complainant in order to impersonate it in its emails. Respondent's selection of the domain name was no happenstance. Registering a confusingly similar domain name with actual knowledge of a complainant's rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Complainant argues that Respondent's registration of the domain name with a privacy service is also evidence of bad faith. Many UDRP panels, especially in the years first following the adoption of the Policy, accepted this argument. More recently, however, in light of many instances of abuse of information gained from domain name registrations, many registrants, and indeed even registrars themselves, have opted to use privacy services. The WIPO Overview 3.0, at ¶ 3.6, acknowledges that there are recognized legitimate uses of privacy and proxy services, and in 2018 the European Union adopted its General Data Protection Regulation (GDPR) which potentially subjects entities around the world to stiff penalties in the interest of protecting personal identifying information of European Union citizens worldwide. Domain name registrars offer and recommend data privacy services to domain name registrants to protect their data, and domain name registrants are with increasing frequency using such services. In summary, there are any number of reasons a registrant might choose to use a privacy service that do not involve bad faith, and the use of such services cannot be taken ipso facto as evidence of bad faith. Rovio Entertainment Corporation v. baobin chi, Case No. D2021-0888 (WIPO May 26, 2021) (". . . the mere fact that the WhoIs details of a respondent are protected by Pa privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).").

 

Any inference of bad faith based upon the use of a privacy service would most likely involve some notion that the respondent did so in order to hinder or delay the filing of an administrative proceeding seeking transfer. The use of a privacy service may cause some minor delay after the administrative proceeding is commenced, to enable the provider to obtain previously screened registrant information from the registrar, but it does not impose any real deterrent to the filing of a case. UDRP cases are in the nature of in rem  proceedings. The Panel has jurisdiction over the domain name and can enter any orders contemplated by the relevant policy as to the domain name without personal jurisdiction over the respondent. In this case, there is no evidence to support any contention that Respondent's use of a privacy service to register the domain name was for any improper or unlawful purpose. Respondent's use of a privacy service is not evidence of bad faith.

 

For the reasons first set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <tabatchnickfinefood.com> domain name be TRANSFERRED TO COMPLAINANT.

 

 

 

Charles A. Kuechenmeister, Panelist

February 20, 2025