national arbitration forum

 

DECISION

 

L. Tremain, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT

Claim Number: FA1105001387271

 

PARTIES

 

Complainant is L. Tremain, Inc. (“Complainant”), represented by Kenneth D. Tremain, New York, USA.  Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), represented by Paul Keating of Law.es, Isle of Man.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <butterbellcrock.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2011; the National Arbitration Forum received payment on May 9, 2011.

 

On May 5, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <butterbellcrock.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 May 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@butterbellcrock.com.  Also on May 10, 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.

 

Respondent submitted a Response on June 1, 2011, after the deadline to file a response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.  Nevertheless, the Panel, in its discretion, will accept and consider this Response.  See Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).

 

The Forum received a timely Additional Submission from the Complainant on June 5, 2011 and a timely Additional Submission from Respondent on June 13, 2011.

 

On June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.    Complainant

 

Complainant markets products, primarily butter crocks, under the trademark BUTTER BELL.  Complainant registered the BUTTER BELL mark with the United States Patent and Trademark Office (the “USPTO”) on March 5, 2002. 

 

Complainant contends that the disputed domain name is confusingly similar to its BUTTER BELL mark because it incorporates the mark in its entirety, adding the descriptive word “crock,” which clearly relates to Complainant’s products.

 

Complainant states that Respondent does not have rights or legitimate interests with respect to the domain name because Complainant has not authorized, licensed or otherwise given permission to Respondent to use the trademark BUTTER BELL.   Moreover, Complainant states that the resolving website lists links to third-party websites, some of which directly compete with Complainant’s business.  Complainant asserts that Respondent presumably receives pay-per-click fees from these sites.

 

Finally, Complainant contends that Respondent registered and is using the domain name in bad faith.  Complainant states that Respondent has been a respondent in numerous UDRP proceedings where panels have ordered Respondent to transfer domain names to the complaining party.

 

B. Respondent

 

Respondent contends that Complainant has not produced evidence that it holds title to the trademark BUTTER BELL.  Respondent further contends that mere registration of a trademark, alone, is insufficient to establish “rights” under the UDRP.  Respondent states that Complainant’s mark is generic and purely descriptive.

 

Respondent states that the domain name has been in use since September 2004 “as a search term leading to contextually related advertising. . . . The Domain name is used in its descriptive sense in conjunction with an advertising subscription database.”  Respondent denies that it is using the Domain Name to divert consumers from Complainant.

 

C.   Complainant’s Additional Submission

 

In its Additional Submission Complainant has provided evidence of the trademark assignment from its prior owner.  Complainant explained that although a trademark examiner initially rejected the application because the mark was generic, subsequently the examiner concluded that the mark was not generic or descriptive.  Complainant also states that in all of the 28 reported UDRP decisions involving Respondent the respective panels ordered the transfer of the domain names to the complaining parties. 

 

D.   Respondent’s Additional Submission

In its Additional Submission, Respondent states that the registration of the mark BUTTER BELL with a national trademark authority is insufficient to establish rights in that mark for the purpose of UDRP proceedings.  Respondent states that no one acting on its behalf was aware of Complainant’s mark at the time the domain name was registered.  Finally, Respondent objects to the filing of Complainant’s Additional Submission.

 

FINDINGS

 

Complainant has established rights in the BUTTER BELL mark as it holds a trademark registration for the mark with the USPTO (Reg. No. 2,543,775 issued Mar. 5, 2002).

 

DISCUSSION

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the BUTTER BELL mark as it holds a trademark registration for the mark with the USPTO (Reg. No. 2,543,775 issued Mar. 5, 2002).[1]  A complainant can establish rights in a mark by registering with a trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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 Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Futhermore, it is not necessary for a complainant to register its mark within the same country where the respondent resides or operates.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent contends that Complainant’s mark is generic; thus, according to Respondent, Complainant is unable to satisfy the requirements of Policy ¶ 4(a)(i).  Respondent points to one decision in which the panel held that where a trademark “appears to be generic or descriptive” the complaining party must show that the mark has acquired distinctiveness.  Luminous Media Ltd. v. Hamlin, FA1344967 (Nat. Arb. Forum Oct. 26, 2010).  That view is contrary to the consensus view that if the “complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.”  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 1.1. 

 

Respondent also points to the decision in Combined Ins. Group Ltd. v. iclicks c/0 Michael Mayder, FA1261538 (Nat. Arb. Forum June 25, 2009).  In that case the domain name in dispute was <cheapautoinsurance.com>.  Although the panel described the complainant’s CHEAP AUTO INSURANCE mark as generic, its decision it nevertheless found that the complainant met the requirements of Policy ¶ 4(a)(i) because the mark was registered with the USPTO.  The panel’s decision was that the respondent had a legitimate interest in or bona fide use of the domain name because the domain name was registered in 2003, six years before the complainant obtained trademark rights.  In contrast, here, the Complainant obtained trademark rights in the BUTTER BALL mark well before the registration of the domain name. 

 

Respondent also relies upon Viking Office Prods., Inc. v. Natasha Flaherty a/k/a ARS-N6YBV, FA1383534 (Nat. Arb. Forum May 31, 2011).  In that case the complainant held a trademark for the VIKING mark in connection with its business of supplying office products and services.  The panel found that the respondent had been commonly known by the domain name, and that the domain name “celebrates Respondent’s late husband’s Nordic heritage and personal interest in Vikings.”  Under the circumstances, the panel found that the respondent had made a legitimate noncommercial or fair use of the domain name.   Unlike the situation in Viking Office Prods., Inc., in this case the Respondent’s domain name offers links to sites that provide products in direct competition with Complainant.

 

Complainant also maintains that Respondent’s <butterbellcrock.com> domain name is confusingly similar to Complainant’s BUTTER BELL mark.  Complainant argues that the disputed domain name uses the entire BUTTER BELL mark and merely changes it by adding the descriptive word “crock,” which relates to Complainant’s primary product of butter crocks, deleting the space between the words of the mark, and by adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of descriptive words relating to Complainant’s business does not avoid a finding of confusing similarity.  See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).  The Panel finds that deletion of a space between words of a mark and the affixation of a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark.  See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel therefore concludes that Complainant has established its rights in the BUTTER BALL mark according to Policy ¶ 4(a)(i), by registering its mark with the USPTO.  The Panel further concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under paragraph 4(a)(ii) of the Policy Complainant must first make out a prima

facie showing that Respondent lacks rights or legitimate interests in the disputed

domain name. The threshold for such showing is low.  See Starwood Hotels &

Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).  The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden has shifted to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).

 

Complainant contends that Respondent is not commonly known by the <butterbellcrock.com> domain name because the WHOIS information indicates that Respondent registered the domain name under a privacy shield not similar to the domain and because Complainant has never authorized or licensed Respondent to use its BUTTER BELL mark within the disputed domain name.  The Panel finds that given the lack of affirmative evidence, Respondent has failed to show that it is commonly known by the <butterbellcrock.com> domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).

 

Complainant has shown that Respondent’s disputed domain name resolves to a directory website featuring third-party links to commercial sites, some of which sell kitchen supplies and butter bells in direct competition with Complainant’s business.  Complainant claims that Respondent likely receives click-through fees from these links.  The operation of such directory websites to reroute Internet users to a complainant’s competitor is not 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).  See 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).  This Panel finds accordingly.

 

Registration[2] and Use in Bad Faith

 

Complainant has shown that Respondent has a history of registering infringing domain names and that Respondent has participated in multiple UDRP proceedings that have resulted in findings of bad faith and transfers of the domain names.  E.g., The Knot, Inc. v. Privacy Disclosed Agent for YOLAPT, FA 1350443 (Nat. Arb. Forum Nov. 18, 2010);  Iconix Brand Group, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, FA 1351959 (Nat. Arb. Forum Nov. 26, 2010).  A history of UDRP proceedings resulting in findings of bad faith indicates a pattern of bad faith registration under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (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); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

 

Complainant alleges that Respondent registered and is using the <butterbellcrock.com> domain name to disrupt its business.  Complainant states that Respondent’s disputed domain name resolves to a website displaying third-party links, some of which directly compete with Complainant’s sale of butter bell kitchen products.  The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business by redirecting potential customers to competing websites, and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).

 

The Panel infers that Respondent collects click-through fees from the aforementioned links on the resolving website.  Complainant argues that Respondent’s use of a confusingly similar disputed domain name creates a likelihood of confusion as to Complainant’s association with, or sponsorship of, Respondent’s website and products offered through the featured links.  Registration and use of a confusingly similar domain name to profit off the misperceptions of Internet users by gathering click-through fees is evidence of bad faith under Policy ¶ 4(b)(iv).  See University 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 Policy ¶ 4(b)(iv).”); see also 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)).

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <butterbellcrock.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  June 14, 2011