Land O' Lakes Inc. v Offbeat Media Inc.
Claim Number: FA0101000096451
The Complainant is Land O' Lakes Inc., St. Paul, MN, USA ("Complainant") represented by Jeffrey D. Shewchuk, of Kinney & Lange P.A. The Respondent is Offbeat Media Inc., Carson City, NV, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
`The domain name at issue is "land-o-lez.com" registered with Tucows.
On February 20, 2001 pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 17, 2001; the Forum received a hard copy of the Complaint on January 17, 2001.
On January 17, 2001, Tucows confirmed by e-mail to the Forum that the domain name "land-o-lez.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 January 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
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." 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 the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The web site operated at "land-o-lez.com" is commercial and pornographic. The "land-o-lez.com" domain name, beginning as it does with "land-o-", is likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of Respondent with Complainant, and is likely to cause confusion, to cause mistake, and to deceive as to the origin, sponsorship, or approval of Respondent's goods, services, or commercial activities by Complainant.
OFFBEAT MEDIA, Inc. registered the "land-o-lez.com" Domain Name on January 13, 1998 through TUCOWS.COM, Inc. COMPLAINANTS began use of its "LAND O' LAKES" mark at least as of 1928, and has been using the mark in commerce for more than seventy years. Complainant’s "LAND O’ LAKES" trademark and trade dress has built up more than seventy years of goodwill. The Complainant further contends that by virtue of its long and widespread use, the "LAND O’ LAKES" family of marks has become famous and well recognized. OFFBEAT MEDIA, Inc. has not acquired any legitimate rights in the "land-o-lez.com" domain name over the last two years.
OFFBEAT MEDIA, Inc. has no legitimate noncommercial or fair use for the "land-o-lez.com" domain name. OFFBEAT MEDIA, Inc. has demonstrated its intent to trade off Complainant’s goodwill and to tarnish Complainant’s reputation for commercial gain.
The Respondent has not disputed the contentions addressed in the Complaint and states that it "will agree to transfer of the domain to Land O Lakes."
The Complainant has been continually using its "LAND O' LAKES" mark in commerce since at least 1928. The Complainant registered the "LAND O’ LAKES" mark with the U.S. Patent and Trademark Office as early as 1932.
On January 13, 1998, the Respondent registered the "land-o-lez.com" domain name.
On September 26, 2000, the Complainant visited the site to which the "land-o-lez.com" domain name is connected and found that it contained hardcore pornography. The "land-o-lez.com" web page contained the words "LAND O’ LEZ" with the same shaded, block lettering as the "LAND O’ LAKES" design marks. The "land-o-lez.com" web page pornographically depicted two women in the same location, relative to the letter "O", as the Native American woman pictured in the "LAND O’ LAKES" design mark. The "land-o-lez.com" web page further included the text "Sweet Creamy Women" in the same color and script as the phrase "Sweet Cream Salted" on the registered design mark of the Complainant’s butter containers.
On November 28, 2000, the Complainant’s attorney wrote to the Respondent requesting that the Respondent "immediately shut down the pornographic site that rides on the goodwill" of the "LAND O’ LAKES" trademarks and trade dress, and demanding that they surrender the Domain Name Registration. Respondent made no effort to respond to the Complainant.
Sometime after November 28, 2000, traffic to "land-o-lez.com" was redirected to another site at "lezweb.com".
After receiving the Complaint, Respondents e-mailed the Forum stating, "Offbeat Media Inc has reviewed the complaint and does not have any desire to pursue this further and will agree to the transfer of the domain to Land O Lakes."
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 formal response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or Confusingly Similar
The mark "LAND O’ LAKES" and the domain name "land-o-lez.com" are confusingly similar. Both phrases use the term "land o" followed by a one consonant word that starts with the letter "L". The pronunciation and look of the phrases are confusingly similar, and a consumer might reasonably believe there is an affiliation between the Complainant and the domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name "venesign.com" and the Complainant’s mark, VeriSign, are so close that confusion can arise in the mind of the consumer). The hyphens and the addition of the generic ".com" do not diminish the domain name’s similarity with the Complainant’s mark. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’ s mark).
Therefore, the Panel concludes that the Complainant has met the burden set forth under Policy 4(a)(i).
Rights or Legitimate Interests
The Respondent has not claimed that it has any rights or legitimate interests with respects to the "land-o-lez.com" domain name. In fact, the Respondent has shown a willingness to transfer the domain name to the Complainant, which implies that the Respondent has no rights or legitimate interests in the domain name. See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).
Respondent OFFBEAT MEDIA, Inc.’s rights and interests in "land-o-lez.com" are undermined further by Respondent’s current use of the domain name to direct Internet users to the pornographic site "lezweb.com". Respondent’s use of "land-o-lez.com" to attract users to other sites is not a legitimate use of a domain name. See America Online Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).
The Respondent has not offered any evidence that it is commonly known by the "land-o-lez" phrase under Policy 4(c)(ii).
The Complainants have established that the Respondents were not making a legitimate noncommercial or fair use of the domain name under Policy 4(c)(iii). The Respondents used the domain name in conjunction with pornographic services that are not considered to be noncommercial or fair use. Nor is such use a bona fide offering of goods or services under Policy 4(c)(i). See National Football League Properties, Inc., et al. v. One Sex Entertainment Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also AltaVista Company v. Geoffrey Fairbairn, D2000-0849(WIPO Oct. 13, 2000).
Therefore, the Panel determines that the Complainant has established its burden set forth under Policy 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends Respondent has shown bad faith under Policy 4(b)(iv). The Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site that may cause confusion as to the source or affiliation of the site. See MatchNet plc. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith).
The Respondent’s expressed willingness to transfer the name also satisfies the bad faith requirements set forth in Policy 4(b). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan 12, 2001) (offering to transfer the domain name at issue indicates the respondent’s bad faith in the use and registration of the domain name).
Therefore, the Panel concludes that the Complainant has met the burden set forth under Policy 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name "land-o-lez.com" be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: February 23, 2001
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