Fortune Hi-Tech Marketing Inc. v. Lime Maids Inc
Claim Number: FA1111001417036
Complainant is Fortune Hi-Tech Marketing Inc. (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Lime Maids Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fhtm.com>, registered with DotRegistrar.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2011; the National Arbitration Forum received payment on November 23, 2011.
On November 23, 2011, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <fhtm.com> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar 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 November 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@fhtm.com. Also on November 23, 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 December 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <fhtm.com> domain name is identical to Complainant’s FHTM mark.
2. Respondent does not have any rights or legitimate interests in the <fhtm.com> domain name.
3. Respondent registered and used the <fhtm.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fortune Hi-Tech Marketing Inc., is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its FHTM mark (e.g., Reg. No. 3,803,573 filed August 9, 2007; registered June 15, 2010). The mark is used in connection with a multi-level marketing company that connects independent sales representatives with companies that produce a wide variety of goods and services, including personal care products, vitamins and supplements, cellular phone service, and security services.
Respondent, Lime Maids Inc, registered the <fhtm.com> domain name after Complainant inadvertently allowed the disputed domain name to lapse. The disputed domain name now redirects Internet users to the <limemaids.com> domain name, Respondent’s janitorial business 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.
Complainant contends that it has rights in the FHTM mark. Complainant has supplied the Panel with evidence of its registration of the FHTM mark with the USPTO (e.g., Reg. No. 3,308,573 filed August 9, 2007; registered June 15, 2010). Past panels have found that registration with a federal trademark authority is sufficient to establish rights in a mark. 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Furthermore, the relevant date for which a complainant’s rights are established through USPTO registration is the date the complainant filed the trademark registration. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant has rights in the FHTM mark pursuant to Policy ¶ 4(a)(i).
Complainant argues also that the <fhtm.com> domain name is identical to Complainant’s mark. Respondent incorporates Complainant’s mark in full and simply adds the generic top-level domain (“gTLD”) “.com.” Panels in Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001), and Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001), held that the addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. The Panel thus finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Where a complainant has made a prima facie case in support of the allegations it makes, the respondent bears the burden of disproving these claims. 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)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the Respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this claim has been supported by Complainant by evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent and thus may infer that Respondent does not have rights or legitimate interests in the <fhtm.com> domain name. However, the Panel will review the record for information which suggests otherwise.
Complainant argues that Respondent is not commonly known by the <fhtm.com> domain name. Complainant claims that Respondent is a former independent sales representative of Complainant’s but currently has no connection to Complainant or the FHTM mark. Additionally, Complainant contends that Respondent’s authorization to use the FHTM mark terminated in 2009. Complainant notes that Respondent mentions the FHTM mark on its website briefly in order to appear to be commonly known by Complainant’s mark but that this slight mention does not amount to Respondent being commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Lime Maids Inc” as the domain name registrant. The Panel finds that the registrant listed in the WHOIS information does not suggest that Respondent is commonly known by the <fhtm.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 argues that Respondent is using the <fhtm.com> domain name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have previously held in MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000), and Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000), that no rights or legitimate interests are conferred when a respondent infringes a mark in a disputed domain name to redirect Internet traffic to the respondent’s own website. Respondent is using the <fhtm.com> domain name to redirect Internet users to its own <limemaids.com> website. The Panel finds that Respondent’s redirecting of Internet users to its own website is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent’s willingness to sell the <fhtm.com> domain name demonstrates its lack of rights and legitimate interests in the disputed domain name. Panels have found in the past that a respondent who offers its domain name for sale have no rights or legitimate interests in its domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Complainant contends that Respondent offered to sell the <fhtm.com> domain name to Complainant for $70,000. The Panel finds that Respondent’s willness to sell the <fhtm.com> domain name demonstrates Respondent’s lack of rights and legitimate interests.
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant contends that Respondent’s registration and use of the disputed domain name was done in bad faith. Complainant claims that it contacted Respondent in an attempt to resolve this dispute amicably but instead Respondent offered to sell the disputed domain name for $70,000. The Panel infers that this offer exceeds Respondent’s out-of-pocket costs to register the domain name. The Panel finds that Respondent’s offer to sell the domain name demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Complainant argues that Respondent’s registration and use of the <fhtm.com> domain name is intended to create commercial gain by attracting Complainant’s intending consumers. The <fhtm.com> domain name is identical to Complainant’s FHTM mark. Given the identical nature of the disputed domain name, Internet users who are seeking Complainant but instead find Respondent will assume that the disputed domain name is associated with Complainant and become confused about whether Respondent’s <limemaids.com> domain name is affiliated with Complainant. As a result of the confusion regarding the source of the <fhtm.com> domain name, some Internet users will likely purchase Respondent’s goods and services offered on its own website, thus generating profit for Respondent. Therefore, the Panel finds that Respondent’s registration and use of the <fhtm.com> domain name was done in order to take commercial advantage of Internet users’ confusion as to the source, sponsorship, or affiliation with Complainant pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant argues that Respondent was only able to register the disputed domain name due to opportunistic bad faith. Complainant contends that immediately prior to Respondent’s registration of the <fhtm.com> domain name, Complainant was the registrant of the <fhtm.com> domain name. Complainant alleges that, due to employee turnover, Complainant’s registration of the <fhtm.com> domain name inadvertently lapsed. Complainant asserts that Respondent noticed this error and sought to capitalize on it in bad faith as a former employee who was fired and seeking retaliatory action. The Panel finds that Respondent’s acquisition of the <fhtm.com> domain name following Complainant’s inadvertent lapse of the domain name registration given that Respondent knew of Complainant’s stake in the domain name is evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FHTM mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent is a former independent representative of Complainant’s business in connection with the FHTM mark. Given that Respondent used to be employed by Complainant, the Panel finds that Respondent had actual notice of Complainant’s rights in the FHTM mark pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <fhtm.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 10, 2012
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