Henny Penny Corporation v. JASON HESTON, JL HOLDINGS
Claim Number: FA1412001597207
Complainant is Henny Penny Corporation (“Complainant”), represented by Brian D. Wright of Faruki Ireland & Cox P.L.L., Ohio, USA. Respondent is JASON HESTON, JL HOLDINGS (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hennypennyfryers.com>, registered with Webfusion Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2014; the National Arbitration Forum received payment on December 29, 2014.
On December 30, 2014, Webfusion Ltd. confirmed by e-mail to the National Arbitration Forum that the <hennypennyfryers.com> domain name is registered with Webfusion Ltd. and that Respondent is the current registrant of the name. Webfusion Ltd. has verified that Respondent is bound by the Webfusion 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 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 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@hennypennyfryers.com. Also on January 2, 2015, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" 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, 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
i. Complainant owns the HENNY PENNY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,953,188, registered January 30, 1996).
ii. Complainant uses the HENNY PENNY mark in connection with its business of manufacturing and producing commercial pressure fryers.
1. Complainant has now expanded and uses the HENNY PENNY mark in connection with open fryers, combi ovens, rotisseries, holding cabinets, and display merchandisers.
i. Policy ¶ 4(a)(i)
1. The <hennypennyfryers.com> domain name is confusingly similar to Complainant’s HENNY PENNY mark because Respondent has simply added the term “fryers” to the mark, which makes the disputed domain name even more confusingly similar, as Complainant sells fryers.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <hennypennyfryers.com> domain name. Respondent is neither authorized nor licensed to use the HENNY PENNY mark.
3. Respondent does not provide any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent is using the disputed domain name to intentionally mislead Internet users as to its association with Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to sell Complainant’s own products, which disrupts Complainant’s business.
2. Respondent is intentionally attempting to attract users to the website at the disputed domain name for commercial gain by creating a likelihood of confusion as to its affiliation with Complainant.
3. Clearly, Respondent had some type of knowledge of Complainant’s rights in the HENNY PENNY mark, as Respondent is selling Complainant’s own products on the website located at the disputed domain name.
B. Respondent
a. Respondent failed to submit a formal Response in this proceeding. Respondent did send email saying that he would now be seeking legal advice and that he should be considered the rightful owner of the <hennypennyfryers.com> domain name.
Complainant is Henny Penny Corporation of Eaton, OH, USA. Complainant is the owner of domestic and international registrations for the mark HENNY PENNY which it has continuously used since at least as early as 1996 in connection with its provision of goods and services in the foodservice equipment industry.
Respondent is Jason Heston, JL Holdings, of Liverpool, GB. Respondent’s registrar’s address is listed as Middlesex, UK. Respondent registered the disputed domain name on or about January 8, 2009.
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 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(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.”).
Complainant uses the HENNY PENNY mark in connection with its business of manufacturing and producing commercial pressure fryers. More recently, Complainant has expanded its business in connection with open fryers, combi ovens, rotisseries, holding cabinets, and display merchandisers. Complainant claims to own the HENNY PENNY mark through its numerous trademark registrations with the USPTO, even though Respondent resides in Great Britain. (e.g., Reg. No. 1,953,188, registered January 30, 1996). Complainant’s argument is supported by previous UDRP decisions. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant’s registrations with the USPTO are sufficient under Policy ¶ 4(a)(i).
Complainant argues that the <hennypennyfryers.com> domain name is confusingly similar to Complainant’s HENNY PENNY mark because Respondent has simply added the term “fryers” to the mark. Complainant further argues that the addition of this term actually makes the disputed domain name even more confusingly similar to Complainant’s HENNY PENNY mark, because Complainant’s mark is used in connection with the sale of fryers. The Panel notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and by the omitted space between the words of the mark. Prior panels have found that the addition of a generic term to a mark does not allow a disputed domain name to escape from confusing similarity and that the addition of a gTLD and omission of space between the words of the mark are irrelevant changes under the Policy ¶ 4(a)(i) analysis. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds that the <hennypennyfryers.com> domain name is confusingly similar to Complainant’s HENNY PENNY mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
It is Complainant’s position that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name. Further, Complainant contends that Respondent is neither licensed nor authorized to use the HENNY PENNY mark. The Panel notes that the WHOIS information identifies “Jason Heston” as the registrant of the disputed domain name and that Respondent has failed to submit a formal Response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <hennypennyfryers.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent uses the disputed domain name to intentionally redirect Internet users to its own website for commercial gain. Prior panels have refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name where the respondent intentionally looks to profit off the confusion of Internet users as to its association with the complainant. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant asserts that Respondent is using the disputed domain name to disrupt Complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). Specifically, Complainant contends that Respondent is disrupting its business by selling Complainant’s own products at Respondent’s website. Prior panels have found bad faith when the respondent engages in such conduct. See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”). The Panel here finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain by creating a likelihood of confusion as to its association with Complainant. Complainant states that Internet customers will be confused by the similarity in names between Respondent and Complainant and by the products offered by Respondent. Complainant believes that such actions constitute bad faith under Policy ¶ 4(b)(iv). Prior panel decisions support this argument. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel here finds that Respondent’s actions demonstrate evidence of bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hennypennyfryers.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 12, 2015
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