Mars, Incorporated v Tushar Dayal
Claim Number: FA1104001381704
Complainant is Mars, Incorporated (“Complainant”), represented by Ross Q. Panko of Arent Fox LLP, Washington D.C., USA. Respondent is Tushar Dayal (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snickers.co>, 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 4, 2011; the National Arbitration Forum received payment on April 4, 2011.
On April 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <snickers.co> 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 ICANN’s Uniform Domain Name 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, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@snickers.co. Also on April 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 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 <snickers.co> domain name is identical to Complainant’s SNICKERS mark.
2. Respondent does not have any rights or legitimate interests in the <snickers.co> domain name.
3. Respondent registered and used the <snickers.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mars Incorporated, is a large provider of chocolates and other confectionary goods. Complainant owns multiple registrations for the SNICKERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 239, 311 issued February 28, 1928). Complainant uses the SNICKERS mark to promote and sell its candy bar products.
Respondent, Tushar Dayal, registered the disputed domain name on July 20, 2010. The disputed domain name resolves to a site offering links to Complainant’s competitors in the chocolate business. Respondent presumably receives click-through fees from these linked sites.
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 argues that it has established its rights in the SNICKERS mark by registering that mark with the USPTO. Previous panels have determined that registering a mark with a federal trademark authority like the USPTO gives the registrant affirmative and defendable rights in that mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established its rights in the SNICKERS mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO (e.g., Reg. No. 239, 311 issued February 28, 1928).
Complainant also argues that the <snickers.co> domain name is identical to its own SNICKERS mark. The disputed domain name includes the entire mark while only adding the country-code top-level domain (“ccTLD”) “.co.” The Panel finds that the changes made by Respondent fail to sufficiently differentiate its disputed domain name from Complainant’s SNICKERS mark, making the two identical under Policy ¶ 4(a)(i). See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Based on prior panels decisions, Respondent in this matter now has the burden of proving its rights or legitimate interests in the disputed domain name because Complainant has met its initial prima facie burden. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to provide a response to the complainant filed and therefore, this Panel may assume that it lacks any rights or legitimate interests in the mark. 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.”). Nonetheless, the Panel will still examine the record in its entirety to make a determination regarding Respondent rights or legimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <snickers.co> domain name. Respondent has offered no evidence to support a finding that it is known by the disputed domain name. The WHOIS information identifies the registrant as “Tushar Dayal.” The Panel finds that neither the WHOIS information nor any other evidence on the record supports a contrary finding and therefore, the Panel holds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <snickers.co> domain name resolves to a site offering links to third-party sites. These links resolve to the sites of Complainant’s competitors in the chocolate business. Previous panels have found that this usage does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). Therefore, the Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant asserts that Respondent’s <snickers.co> domain name disrupts its business constituting bad faith registration and use on the part of Respondent. Respondent’s <snickers.co> domain name resolves to a site offering links to third-party sites which compete with Complainant’s business. Internet users diverted to Respondent’s site and then on to one of the linked sites may then purchase goods from Complainant’s competitors instead of Complainant. The Panel finds that this use does disrupt Complainant’s business and is therefore indicative of bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also asserts that Respondent has registered and used the disputed domain name in bad faith due to Respondent’s intended commercial gain from the site. Respondent’s <snickers.co> domain name resolves to a site offering links to third-party sites which compete with Complainant’s business. Respondent presumably receives a click-through fee from the linked sites for each Internet user diverted to one of the links. The Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv) due to the commercial gain Respondent seeks from the operation of the site. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snickers.co> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 30, 2011
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