Dogfish Head Marketing, LLC v. Rami Steitieh / TRILOT LLC
Claim Number: FA1504001614519
Complainant is Dogfish Head Marketing, LLC (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington D.C., USA. Respondent is Rami Steitieh / TRILOT LLC (“Respondent”), Jordan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dogfish.net>,('the Domain Name') registered with DYNADOT LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2015; the Forum received payment on April 14, 2015.
On April 14, 2015, DYNADOT LLC confirmed by e-mail to the Forum that the <dogfish.net> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 April 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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 firstname.lastname@example.org. Also on April 16, 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.
A Response was received by e-mail from Respondent on May 6, 2015.
On May 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant's submissions can be summarised as follows:
Complainant has registered trade marks in the USA, inter alia, for the word mark DOGFISH HEAD and owns the unregistered mark DOGFISH which has been continually used in commerce by Complainant since at least 1996 including at dogfish.com for beer and beer related goods and services, earning over 100million US$ since that time and winning numerous awards.
Dogfish.com is identical to the Complainant’s DOGFISH mark and confusingly similar to its DOGFISH HEAD and other logo registered marks. The addition of a gTLD to a mark such as .net does nothing to alleviate the similarity between domain names in dispute and complainants' marks.
Respondent is using the Domain Name dogfish.net for a generic parked web site that offers sponsored click through links to various third party web sites. This web site is not owned, licensed, approved or affiliated with the Complainant. It is not use in connection with a bona fide offering of goods and services. Respondent does not appear to be commonly known as the Domain Name. It lacks rights and legitimate interests in the Domain Name.
Respondent is using the Domain Name to divert internet users to its web site when they are seeking the Complainant and its goods and services. Using the Domain Name to point to click through links to third party commercial web sites constitutes bad faith registration and use under the Policy. Respondent has constructive notice of the Complainant's trade marks through their registration.
Respondent's submissions made by e-mail can be summarised as follows:
Respondent is in the business of buying and selling generic domain assets which is a legitimate business. 'Dogfish' is a generic word and is used by many people in relation to their products and services.
The Complainant has a trade mark for beer which is not exclusive for every potential use.
The Domain Name was not registered and used in bad faith
Complainant has registered trade marks in the USA, inter alia, for the word mark DOGFISH HEAD and owns the unregistered mark DOGFISH which has been used in commerce by Complainant since at least 1996 including at dogfish.com for beer and beer related goods and services which have won numerous awards.
Respondent is using the Domain Name to point to links about outdoor pursuits and music.
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.
Typically, a gTLD can never distinguish a domain name from the mark at issue See Trip Network Inc. v Alviera FA 914943 (Nat. Arb. Forum Mar 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy 4(a) (i) analysis). Accordingly, the Panel agrees with the Complainant that the Domain Name is identical to the Complainant's unregistered DOGFISH mark and confusingly similar to its DOGFISH HEAD mark, for the purposes of the Policy ¶ 4(a)(i), “dogfish” being the dominant element of that mark. Accordingly the Complainant has satisfied the first limb of the Policy.
Respondent maintains it is in the business of buying and selling generic domain assets. The Domain Name has been pointed to a page containing links with an outdoor pursuits theme, namely hunting and to some general links related to ‘free’ music or music on the Internet. There is no evidence that the Domain Name has been used to target the Respondent such as links to beer related products or evidence that the Domain Name has been offered for sale to the Complainant. Nor is there any evidence that the Respondent trades in domain names containing the famous marks of third parties or that it has used the Domain Name to cause confusion on the net. Buying and selling a domain name which has an ordinary meaning where the owner of a trade mark corresponding with that generic name has not been targeted can be legitimate if it appears the use may be in the context of the domain name’s ordinary meaning and does not refer to the Complainant’s mark. See Front Range Internet Inc. v Murphy FA 145231 (Nat Arb Forum Apr 4, 2003) (‘In some circumstances the trading of domain name registrations is considered legitimate).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dogfish.net> domain name remain with the Respondent.
Dawn Osborne, Panelist
Dated: May 27, 2015
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