Pacific Spice Company, Inc. v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA2102001932331
Complainant is Pacific Spice Company, Inc. (“Complainant”), represented by Chaim Schlussel, California, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pacificspice.com> (the “disputed domain name”), registered with DNC Holdings, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2021; the Forum received payment on February 16, 2021.
On February 17, 2021, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <pacificspice.com> disputed domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 February 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2021 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@pacificspice.com. Also on February 19, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a California corporation established in 1966 and has been a well-known name in the wholesale spice industry since that time. Complainant imports, manufactures, packages and sells a full range of spices and spice blends. Complainant claims common law rights in the PACIFIC SPICE trademark based on its continuous use of the mark for over 50 years and also owns a trademark registration for its logo. The logo consists of a design of a spice plant with the words “Pacific Spice Company”. The logo was registered through the United States Patent and Trademark Office on July 14, 2020, United States Trademark Registration No. 6,102,000 in international class 30. Complainant also owns another logo, registered through the United States Patent and Trademark Office on March 19, 2013, United States Trademark Registration No. 4,304,027 in international class 30. The logo consists of a design of flowers and branches surrounded by the words “Pacific Natural Spices”. Complainant’s common law and registered trademarks will hereinafter collectively be referred to as the “PACIFIC SPICE Mark”.
Complainant contends that Respondent’s <pacificspice.com> disputed domain name is virtually identical and confusingly similar to Complainant’s PACIFIC SPICE Mark because it incorporates the PACIFIC SPICE Mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Complainant also contends that Respondent has no rights or legitimate interests in the <pacificspice.com> disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive page. Additionally, Respondent offers the disputed domain name for sale to Complainant.
Finally, Complainant claims that Respondent registered and is using the disputed domain name in bad faith because Respondent has engaged in a pattern of cybersquatting and offered the disputed domain name for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds common law trademark rights in the PACIFIC SPICE as well as a registered trademark in the PACIFIC SPICE logo. Moreover, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PACIFIC SPICE Mark, that Respondent lacks rights or legitimate interests in 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 Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel agrees that Complainant owns a registered trademark registration in the PACIFIC SPICE Mark, specifically in its logos. In addition, the Panel finds that Complainant has common law trademark rights in the PACIFIC SPICE Mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (“The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). The Panel finds that the PACIFIC SPICE Mark has acquired secondary meaning related to its continuous manufacture, promotion, and sale of spices for the past 50 years. Thus, the Panel concludes that Complainant has established common law trademark rights in the PACIFIC SPICE Mark.
Next, the Panel finds that the <pacificspice.com> disputed domain name is identical or confusingly similar to Complainant’s PACIFIC SPICE Mark as it contains the PACIFIC SPICE Mark in its entirety and simply adds the “.com” gTLD. The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corp. v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the disputed domain name is identical or confusingly similar to the PACIFIC SPICE Mark per Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
The Panel concludes that Respondent holds no rights or legitimate interests in the disputed domain name. In order for a complainant to succeed under this element, it must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Moreover, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PACIFIC SPICE Mark. In addition, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead inactively holds the disputed domain name and offers to sell it to Complainant for far in excess of its out-of-pocket costs. Under Policy ¶¶ 4(c)(i) and (iii), failure to make active use of a disputed domain name and to offer to sell the disputed domain name to a complainant are not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make an active use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the domain resolves to an inactive parking page. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Second, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent offered the disputed domain name for sale to Complainant for USD 5,439. Complainant provides a screenshot of Respondent offering to sell the disputed domain name for that amount. Intent to sell a disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Moreover, attempting to sell the domain name for excess of out-of-pocket costs suggests bad faith registration and use under Policy ¶ 4(b)(i). Respondent requested USD 5,439 from Complainant for purchase of the disputed domain name, certainly in excess of Respondent’s out-of-pocket registration costs. Thus, the Panel finds that such conduct constitutes bad faith under Policy ¶ 4(b)(i).”).
Finally, the Panel finds that Respondent engaged in a pattern of bad faith registration and use. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of bad faith registration. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Thus, the conduct described above demonstrates that Respondent has engaged in a pattern of cybersquatting.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pacificspice.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 29, 2021
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