Sara Lee Corporation v. Tom John
Claim Number: FA1104001381500
Complainant is Sara Lee Corporation (“Complainant”), represented by Andrea M. Augustine of Foley & Lardner LLP, Illinois, USA. Respondent is Tom John (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saralee.us>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2011; the Forum received a hard copy of the Complaint on April 1, 2011.
On April 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <saralee.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" 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 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 <saralee.us> domain name is identical to Complainant’s SARA LEE mark.
2. Respondent does not have any rights or legitimate interests in the <saralee.us> domain name.
3. Respondent registered and used the <saralee.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sara Lee Corporation, manufactures and markets bakery, beverage, and retail goods and products worldwide. Complainant owns the SARA LEE mark and has used the mark since at least 1944 in connection with its bakery goods and products. Complainant also holds numerous trademarks for the SARA LEE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 623,191 issued March 13, 1956).
Respondent, Tom John, registered the <saralee.us> domain name on July 17, 2010. The disputed domain name previously resolved to a search engine with a series of links, some of which were affiliated with, and competed with, Complainant, and some which were unrelated to Complainant’s business in bakery goods and products. The domain name currently resolves to an inactive website.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant maintains that it has demonstrated rights in the <saralee.us> domain name. Previous panels have determined that a complainant can establish rights in a mark by registering with a federal trademark authority. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO). Here, Complainant holds numerous trademark registrations of its SARA LEE mark with the USPTO (e.g., Reg. No. 623,191 issued March 13, 1956). Therefore, the Panel finds that Complainant has established its rights in the SARA LEE mark, under Policy ¶ 4(a)(i), through its registration with the USPTO.
Complainant further maintains that Respondent’s <saralee.us> domain name is identical to Complainant’s SARA LEE mark. The disputed domain name incorporates the mark exactly and only changes it by deleting the space between words of the mark and adding the country code top-level domain (“ccTLD”). Previous panels have found that deletion of a space between words of a mark does not adequately distinguish the disupted domain name from Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel also finds that the application of a ccTLD does not prevent a finding that the disputed domain name is identical to Complainant’s mark. See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). The Panel concludes that Respondent’s <saralee.us> domain name is identical to Complainant’s SARA LEE mark under Policy ¶ 4(a)(i).
The Panelf finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent has no rights or legitimate interests in the <saralee.us> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel found that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to UDRP ¶ 4(a)(ii). Here, Complainant has made a prima facie showing. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will look to the record to establish whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence indicating that Respondent owns any service marks or trademarks that reflect the <saralee.us> domain name. The Panel finds that Respondent does not have rights and legitimate interests according to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant claims that Respondent is not commonly known as a business, or in any other manner, by the <saralee.us> domain name. The WHOIS information identifies Respondent as “Tom John,” which is not similar to the disputed domain name. Complainant also mentions that Respondent has no affiliation or relationship with Complainant and is therefore not authorized to use the SARA LEE mark within the domain name. Given the evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <saralee.us> domain name previously resolved to a commercial search engine which offered third-party links, some of which were in direct competition with Complainant’s line of bakery goods and products. Respondent most likely received click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to host a search engine with links both competing with, and unrelated to, Complainant’s bakery business was not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the UDRP).
Complainant alleges that the disputed domain name currently resolves to an inactive website as it was able to get the host to remove the content. However, the Panel finds that Respondent’s failure to make an active use of the website is also not a bona fide offering of goods or services under Policy¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <saralee.us> domain name disrupted its business. Respondent was previously using the disputed domain name to host a search engine with links to competing websites. Internet users intending to purchase bakery goods and products from Complainant may have found Respondent’s website and purchased similar goods from a competitor instead. The Panel finds that such use is disruptive and constitutes bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent received click-through fees from third-party links on the resolving website. Respondent’s use of Complainant’s SARA LEE mark in the disputed domain name may have confused Internet users as to Complainant’s association with, or sponsorship of, the resolving site and featured links. Respondent tried to profit from this confusion by generating click-through fees. The Panel finds that Respondent’s former use of the <saralee.us> domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant claims that it was successful in removing the content from Respondent’s website and that the disputed domain name now resolves to an inactive site. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is further evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saralee.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 29, 2011
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