Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel
Claim Number: FA0602000648190
Complainant is Deep Foods, Inc. (“Complainant”), represented by Lawrence D. Mandel, of Mandel & Peslak, LLC, 80 Scenic Drive, Suite 5, Freehold, NJ 07728. Respondent is Jamruke, LLC. c/o Manish Patel (“Respondent”), represented by Joel G. MacMull, of INC Business Lawyers, 1201 - 11871 Horseshoe Way, Richmond, BC V7A 5H5, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deepfood.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2006.
On February 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <deepfood.com> domain name is registered with Go Daddy Software, Inc. and that the 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 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 20, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on March 20, 2006.
On March 24, 2006, the Forum received a timely Additional Submission from Complainant in accordance with Supplemental Rule 7.
On March 28, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a leading manufacturer of Indian foods in the United States. Complainant has used DEEP as a trademark for its food products for many years, and owns various trademark registrations for DEEP on the Principal Register of the U.S. Patent and Trademark Office, dating back as far as 1984. Complainant alleges that Respondent’s <deepfood.com> domain name is confusingly similar to Complainant’s well-known DEEP mark; that Respondent is using this domain name without authorization to divert Internet users interested in Complainant to a website that promotes unrelated products and services; that Respondent therefore lacks rights or legitimate interests in the domain name; that Respondent’s principal is “a member of the Indian culture” and therefore is likely to be familiar with Complainant and its mark; and that Respondent therefore registered and is using the disputed domain name in bad faith.
Respondent operates various websites relating to food and other industries, and has registered three food-related domain names, <jamruke.com> (referring to a tropical fruit native to India), <foodmixx.com>, and the disputed domain name, <deepfood.com>. Respondent states that it selected the disputed domain name because the word “deep” has many different meanings in various languages, and Respondent intended “to harmonize several of these meanings into a single English short word or phrase that attempted to marry the properties of East Indian ethereal mysticism with the revelry often associated with food and feasts.” Respondent asserts that the disputed domain name is comprised of a generic or descriptive term not exclusively associated with Complainant. Respondent contends that it has rights or legitimate interests in the domain name arising from use of the name in connection with Internet advertising. Respondent takes issue with Complainant’s suggestion that its principal should be presumed to have known of Complainant’s mark merely because of his Indian ethnicity, and argues that there is no evidence Respondent had such knowledge when the disputed domain name was registered. Respondent contends that it registered the domain name in 1999 “as part of a comprehensive business strategy which attempted to capture part of the food and hospitality market,” although it has since abandoned that strategy.
C. Complainant’s Additional Submission
The Additional Submission tendered by Complainant responds to Respondent’s submission and contains detailed allegations and evidence relating to Respondent’s knowledge of Complainant and its DEEP mark. The Forum’s Supplemental Rule 7 regulates the submission of additional statements and documents, but does not itself authorize such additional submissions; the controlling provision is Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), under which discretion to request such supplementation rests with the Panel. See America Online, Inc. v. Miles, FA105890 (Nat’l Arb. Forum May 31, 2002). In general, a Panel should consider additional submissions only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. See, e.g., America Online, Inc. v. Thricovil, FA638077 (Nat. Arb. Forum Mar. 22, 2006); Deutsche Post AG v. NJDomains, D2006-0001 (WIPO Mar. 1, 2006); Pierret v. Sierra Technology Group, LLC, FA472135 (Nat. Arb. Forum July 1, 2005). In this case, as far as the Panel is able to ascertain, the information contained in the Complainant’s Additional Submission reasonably could have been included in Complainant’s initial submission. The Panel therefore declines to consider the material contained in the Additional Submission.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s DEEP mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The disputed domain name is comprised of DEEP, Complainant’s registered trademark for its food products; the generic term “food”; and the generic top-level domain “.com”. The Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant’s allegations as to rights or legitimate interests are sufficient to shift the burden of production to Respondent, although Complainant ultimately bears the burden of proof on this and all other elements required by the Policy. See, e.g., Haemoscope Corp. v. Digital Development Group, FA542015 (Nat. Arb. Forum Sept. 30, 2005). Respondent claims that its use of the disputed domain name in connection with Internet advertising represents a bona fide offering of goods or services under Policy ¶ 4(c)(i) sufficient to demonstrate rights or legitimate interests.
Respondent’s use appears at best to involve merely the redirection of random Internet traffic to a separate website promoting unrelated goods and services; more likely, a substantial proportion of that traffic results from confusion with Complainant’s mark. In any event, this is not a “bona fide offering” as contemplated by the Policy. The Panel concludes that Respondent lacks rights or legitimate interests with respect to the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(a)(iii). In the view of the Panel, Respondent’s use of the disputed domain name to redirect Internet users to a website containing unrelated advertisements qualifies as bad faith use. Whether Respondent’s original registration of the domain name was in bad faith, however, presents a closer question.
The Panel has considered Respondent’s proffered explanation for its selection of the disputed domain name in 1999, but ultimately finds that explanation implausible. Under the circumstances of this case, it seems more likely than not that Respondent was in fact aware of Complainant’s mark at that time, and that Respondent chose the domain name because of its similarity to the mark rather than because of the different meanings of the word “deep” in various languages. Mere constructive knowledge of the mark is of course insufficient, see, e.g., Barclays Global Investors, N.A. v. SocialFunds.com, LLC, FA196046 (Nat. Arb. Forum Nov. 5, 2003); the circumstances here, however, support an inference that Respondent had actual knowledge of the mark. The Panel concludes that Complainant has sustained its burden of proving that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deepfood.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 10, 2006
After the above Decision was prepared (but before it was communicated to the parties), the Forum received an Additional Submission from the Respondent. The Forum determined, and the Panel has confirmed, that Respondent’s Additional Submission is deficient under the Forum’s Supplemental Rule 7, because it was not received by the Forum within five calendar days after the date on which the Forum received Complainant’s Additional Submission. (Complainant’s Additional Submission was received on March 24, 2006; Respondent’s Additional Submission was received on April 4, 2006.) Respondent nonetheless requests that its Additional Submission be considered by the Panel (apparently under the mistaken impression that it was only one day late), explaining that the delay resulted from difficulty in having an affidavit notarized.
Respondent’s Additional Submission is comprised entirely of responses to the allegations in Complainant’s Additional Submission. Because the Panel has already decided to disregard that submission, the Panel need not reach the question of whether justice requires consideration of Respondent’s untimely Additional Submission.
David E. Sorkin, Panelist
Dated: April 10, 2006
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