Sensient Technologies Corporation v. Maison Tropicale S.A.
Claim Number: FA0801001126260
Complainant is Sensient Technologies Corporation (“Complainant”), represented by Lori
S. Meddings, of Michael Best &
Friedrich LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <sensiet.com>, registered with Capitoldomains, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 4, 2008.
On January 4, 2008, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <sensiet.com> domain name is registered with Capitoldomains, LLC and that Respondent is the current registrant of the name. Capitoldomains, LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2008 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 postmaster@sensiet.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <sensiet.com> domain name is confusingly similar to Complainant’s SENSIENT mark.
2. Respondent does not have any rights or legitimate interests in the <sensiet.com> domain name.
3. Respondent registered and used the <sensiet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sensient Technologies Corporation, develops, manufactures, and markets colors, flavors and fragrances, pharmaceuticals, cosmetics, personal and home care, inkjet and specialty inks, display imaging, and industrial colors industries. Complainant has marketed these products under the SENSIENT mark. Complainant registered the SENSIENT mark with the United States Patent and Trademark Office (“USPTO”) on July 17, 2005 (Reg. No. 2,970,916).
Respondent registered the <sensiet.com> domain
name on January 19, 2007. Respondent is
currently using the disputed domain name to host a website that contains a
commercial search engine with sponsored links for unrelated third-party
websites. Moreover, in at least two
other UDRP claims, Respondent has been ordered to transfer the disputed domain
names to the complainants in those cases.
See Credit Industriel et
Commercial
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 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.”).
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.
Complainant’s registration of the SENSIENT mark with the USPTO establishes Complainant’s rights to the mark under Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <sensiet.com> domain name is confusingly similar to Complainant’s SENSIENT mark because it contains Complainant’s entire mark and only excludes one letter. In Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the panel concluded that the domain name <compq.com> was confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name did not significantly change the overall impression of the mark. Here also, the Panel finds the exclusion of the letter “n” to be inconsequential to the determination of whether the disputed domain name is confusingly similar to Complainant’s mark. Moreover, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the <sensiet.com> domain name from Complainant’s mark because all domain names are required to have a top-level domain. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s SENSIENT mark pursuant to Policy ¶ 4(a)(i). See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of establishing that Respondent has neither rights nor legitimate interests in the disputed domain name. A prima facie case can be established by a mere assertion by Complainant, and then the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
The Panel presumes that Respondent lacks all rights and legitimate interests because Respondent has failed to respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). The Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent has never been authorized to use the SENSIENT mark. Where Respondent is commonly known by the disputed domain name, rights and interests can be demonstrated. But here, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that
Respondent is receiving click-through fees by hosting the website that resolves
from the <sensiet.com> domain name. On the website that resolves from the
disputed domain name, Respondent lists links to products and services unrelated
to Complainant’s business. The Panel
finds that this use is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial of
fair use under Policy ¶ 4(c)(iii). See Seiko
Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v.
Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use
of a domain name confusingly similar to Complainant’s mark to divert Internet
users to websites unrelated to Complainant's business does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Moreover, Respondent’s practice of typosquatting evidences lack of rights and legitimate interests in the <sensiet.com> domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
A pattern of previous trademark
infringement evidences registration and use in bad faith under Policy ¶
4(b)(ii). Here, Respondent has been the
respondent in at least two other UDRP claims, and in both claims, Respondent
was ordered to transfer the disputed domain name to the complainant. See Ace
Cash Express, Inc. v. Maison Tropicale S.A., FA 1102450 (Nat. Arb. Forum
Dec. 3, 2007) (transferring the <acecheckcasing.com> domain name to the
complainant); see also Educational
Testing Service v. Caribeean Online International Ltd., Keyword Marketing,
Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd., D2007-0500 (WIPO June
18, 2007) (transferring the <toeflstart.com> domain name to
complainant). The Panel concludes that
Respondent’s previous pattern of cybersquatting demonstrates bad faith
registration and use under Policy ¶ 4(b)(ii).
See Nat’l Wildlife Fed’n v. Kang,
FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of
registering domain names that infringe on other trademark holders' rights;
therefore, Respondent's registration and use of the <yourbigbackyard.com>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the
domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents
Complainant from reflecting its mark on-line.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat.
Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii)
because the domain name prevented the complainant from reflecting its mark in a
domain name and the respondent had several adverse decisions against it in
previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant contends that
Respondent is receiving click-through fees and is using the disputed domain
name to host a website that includes links to unrelated third-party
websites. Complainant also asserts that
Respondent is benefiting from the likely confusion between the <sensiet.com>
domain name and the SENSIENT mark. The Panel finds that this use demonstrates
that Respondent is attempting to attract Internet users to its website for
commercial gain pursuant to Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also
Am. Online, Inc. v. Tencent
Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where the respondent registered and used a domain name confusingly similar to
the complainant’s mark to attract users to a website sponsored by the
respondent).
Finally, the evidence that Respondent is taking advantage of a common misspelling of Complainant’s mark demonstrates registration and use in bad faith under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sensiet.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 11, 2008
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