Welburn Gourd Farm, Inc. v. Reality Stone, Inc.
Claim Number: FA0602000639873
Complainant is Welburn Gourd Farm, Inc. (“Complainant”), represented by Sarah J. Gardner, 2249 Manchester Avenue, Cardiff, CA 92007. Respondent is Reality Stone, Inc. (“Respondent”), 39252 Winchester Rd., #107-403, Murrieta, CA 92563.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellburngourds.com>, registered with Go Daddy Software, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2006.
On February 8, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellburngourds.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 2, 2006 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@wellburngourds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <wellburngourds.com> domain name is confusingly similar to Complainant’s WELBURN GOURDS mark.
2. Respondent does not have any rights or legitimate interests in the <wellburngourds.com> domain name.
3. Respondent registered and used the <wellburngourds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Welburn Gourd Farm, Inc., is a California corporation which operates a family-run gourd farm. Complainant has been continuously using the WELBURN GOURDS mark in connection with its business since 1985. Complainant is well known in the gourd community for its high-quality hard-shell gourds. Complainant has established rights in the WELBURN GOURDS mark through extensive marketing and selling of its gourds for over twenty years. Complainant also registered the <welburngourds.com> domain name on March 31, 2003.
Respondent registered the <wellburngourds.com> domain name on October 18, 2005. Respondent’s domain name resolves to a web directory displaying links to Complainant’s competitors and to unrelated content. Complainant alleges that until recently the domain name resolved to the California Gourds website, a direct competitor of Complainant.
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 draw such inferences it 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 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.
Complainant is not
required to own a trademark registration to establish rights in the WELBURN
GOURDS mark under Policy ¶ 4(a)(i). See British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist).
Complainant has established common law rights in the WELBURN
GOURDS mark through continuous and extensive use of the mark in connection with
its gourd farm business since 1985.
Complainant is well known in the gourd community for producing
high-quality gourds and has spent a great deal of effort marketing and
promoting its gourd products under the mark.
Complainant has also registered the <welburngourds.com> domain
name. Therefore, Complainant’s WELBURN
GOURDS mark has acquired secondary meaning sufficient to establish common law
rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its
use was continuous and ongoing, and secondary meaning was established); see
also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”).
Respondent’s <wellburngourds.com> domain name
is confusingly similar to Complainant’s WELBURN GOURDS mark under Policy ¶
4(a)(i), because it wholly incorporates Complainant’s mark and merely adds an
additional letter “l.” Panels have held
that misspelling a complainant’s mark in a domain name does not distinguish the
domain name from the mark. See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Bama Rags, Inc. v.
Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that
<davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND
mark and therefore confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <wellburngourds.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the
<wellburngourds.com> name.
See Geocities v.
Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the domain name under the name “Reality Stone, Inc.,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <wellburngourds.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Moreover, Respondent’s
<wellburngourds.com > domain name, which is confusingly
similar to Complainant’s WELBURN GOURDS mark, resolves to a web directory
displaying links to Complainant’s direct competitors as well as unrelated
content. Respondent’s use of the
disputed domain name for commercial gain by misdirecting Internet users to
third-party websites offering similar services to the Complainant does not
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website that displayed a series of links,
some of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <wellburngourds.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a website displaying links to Complainant’s direct competitors and to unrelated content. Respondent likely receives click-through fees for each consumer it redirects to other websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name, the website content, and Complainant’s WELBURN GOURDS mark, and capitalizing on the goodwill associated with the mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellburngourds.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 22, 2006
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