Strokin', LLC and Import Specialties, Inc. d/b/a Heartland America v. Phillip Simmons
Claim Number: FA0510000579559
Complainants are Strokin', LLC and Import Specialties, Inc. d/b/a Heartland America (collectively “Complainants”), represented by Dean R. Karau of Fredrikson & Byron, P.A., 200 South Sixth Street, Suite 4000, Minneapolis, MN, 55402-1425. Respondent is Phillip Simmons (“Respondent”), 69 River Rd., San Diego, CA, 33552.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hartlandamerica.com>, registered with Enom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 17, 2005; the National Arbitration Forum received a hard copy of the Complaint October 18, 2005.
On October 20, 2005, Enom, Inc. informed the National Arbitration Forum by email that Respondent’s registration of the <hartlandamerica.com> domain name had expired or been deleted by the registrant during the course of this dispute. Complainant renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, the <hartlandamerica.com> domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 2, 2005, Enom, Inc. restored the <hartlandamerica.com> domain name; however, Enom, Inc. erred and restored the domain name in the registration service provider’s name, Don Foreman, rather than the previous registrant’s name, Phillip Simmons. The Panel dismisses any claims against Don Foreman. The Panel also determines that Phillip Simmons, 69 River Rd., San Diego, CA 33552, is the proper Respondent.
On November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2005, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hartlandamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <hartlandamerica.com>, is confusingly similar to Complainant’s HEARTLAND AMERICA mark.
2. Respondent has no rights to or legitimate interests in the <hartlandamerica.com> domain name.
3. Respondent registered and used the <hartlandamerica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Strokin’, LLC, is the exclusive supplier of imported products for catalog and Internet sales by Complainant Import Specialties, Inc. d/b/a Heartland America. Heartland America is the exclusive licensee of the HEARTLAND AMERICA mark.
Complainant Strokin’,LLC holds the HEARTLAND AMERICA mark, used in connection with mail order catalog services in the field of general durable and non-durable merchandise of others, excluding foods. It registered the HEARTLAND AMERICA mark on May 12, 1992 (Reg. No. 1,686,859) with the U.S. Patent and Trademark Office (“USPTO”).
Respondent, Phillip Simmons, Registered the <hartlandamerica.com> domain name October 17, 2000. The website associated with the disputed domain name refers Internet users to Damark, Complainant’s competitor, at <damark.com>.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant offered its USPTO registration of the HEARTLAND
AMERICA mark. The Panel accepts this
evidence as proof of its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); Innomed Techs., Inc. v.
DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The Panel finds that the <hartlandamerica.com>
domain name is confusingly similar to the HEARTLAND AMERICA mark. The only difference is the omission of the
letter “e,” which does not significantly distinguish the domain name from the
mark. See State Farm Mut. Auto. Ins.
Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000)
(finding that the domain name <statfarm.com> is confusingly similar to
the complainant’s STATE FARM mark); Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to the
complainant’s HEWLETT-PACKARD mark).
The Panel finds that Complainant established Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights to and legitimate interests in the mark contained
in its entirety within the disputed domain name. Complainant alleged that
Respondent has no such rights.
Respondent is appropriating a confusingly similar version of
Complainants’ mark to refer Internet users to a competitor’s website. The Panel finds that this is not a bona
fide offering of a good or service pursuant to Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods
or services); Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”).
Nothing in the record, including the WHOIS information,
demonstrates that Respondent is commonly known by the disputed domain name,
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant established Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad
faith. Respondent is using the
confusingly similar domain name to refer Internet users to Complainants’
competitors. The Panel finds that this
diversionary practice is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites); Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant established 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 <hartlandamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 16, 2005.
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