Dixie Consumer Products LLC v. Private Whois dixiecup.com
Claim Number: FA1112001419529
Complainant is Dixie Consumer Products LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Private Whois dixiecup.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dixiecup.com>, registered with Internet.bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2011; the National Arbitration Forum received payment on December 12, 2011.
On December 13, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <dixiecup.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@dixiecup.com. Also on December 14, 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 January 13, 202, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <dixiecup.com> domain name is confusingly similar to Complainant’s DIXIE mark.
2. Respondent does not have any rights or legitimate interests in the <dixiecup.com> domain name.
3. Respondent registered and used the <dixiecup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dixie Consumer Products LLC, manufactures and markets cups, plates, bowls, cutlery, napkins, dispensers and related tabletop items. Complainant owns multiple trademark registrations for its DIXIE mark with the Dominican Republic National Office of Industrial Property (“NOIP”) (Reg. No. 167,299 registered May 15, 2008), the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 120,264 registered January 29, 1958), and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 19833/76 registered July 20, 1989).
Respondent, Private Whois dixiecup.com, registered the <dixiecup.com> domain name on November 19, 2003. The disputed domain name resolves to a generic pay-per-click link directory featuring links advertising competing companies and products with titles such as “Paper Towels & Dispensers,” “Kimberly Clark Supplies,” “Tork Hand Towel Dispensers,” etc.
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 rights in the DIXIE mark because it owns multiple trademark registrations for its DIXIE mark with the Dominican Republic NOIP (Reg. No. 167,299 registered May 15, 2008), the USPTO (e.g., Reg. No. 120,264 registered January 29, 1958), and the CIPO (e.g., Reg. No. 19833/76 registered July 20, 1989). The Panel finds that registering a trademark with a number of trademark authorities around the world successfully proves a complainant has rights in a mark, even when the mark is not registered in Respondent’s specific country. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <dixiecup.com> domain name is confusingly similar to Complainant’s DIXIE mark because the disputed domain name consists only of the DIXIE mark, the descriptive term “cup,” and the generic top-level domain (“gTLD”) “.com.” Past panels have established that adding a descriptive term to a complainant’s mark does not defeat a claim 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); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Prior UDRP cases have also repeatedly held that a gTLD does not distinguish a disputed domain name from a mark in any way pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel accordingly determines that Respondent’s <dixiecup.com> domain name is confusingly similar to Complainant’s DIXIE mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent declined to respond, however, and thus presented the Panel with nothing but silence in defense of its position. Without further argument from Respondent, the Panel may assume that Complainant’s allegations are true and hold that Respondent lacks rights and legitimate interests. 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). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent, identified as “Private Whois dixiecup.com” in the WHOIS information for the <dixiecup.com> domain name, is not commonly known by the disputed domain name. Complainant denies any association or affiliation with Respondent and asserts that it has never authorized Respondent’s use of the DIXIE mark in any way. Although a portion of the WHOIS information does reflect the disputed domain name, the Panel finds that this minor evidence is insufficient to establish that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) without other evidence showing a nominal connection between the two prior to the disputed domain name’s registration. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant asserts that Respondent uses the <dixiecup.com> domain name to host a website advertising competing products and/or companies through pay-per-click links. Complainant’s submitted screenshot reveals that the displayed links have titles such as “Commercial Towel Dispensers,” “4 oz. Paper Cup,” and “Kimberly Clark Supplies,” among others. Hosting pay-per-click directories at confusingly similar domain names has frequently been found to be inconsistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel accordingly agrees both with Complainant’s arguments and this precedent, concluding that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use as required in Policy ¶¶ 4(c)(i) and (iii).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant’s arguments and submitted screenshots indicate that Respondent uses the <dixiecup.com> domain name to advertise competing products and companies via pay-per-click links. Complainant alleges that its potential consumers are diverted away from Complainant as a result of these links, which disrupt Complainant’s business as a form of competition. The Panel thus determines that Respondent’s activities at the disputed domain name reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iii) due to their competitive disruption of Complainant’s business. 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 Policy ¶ 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 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 contends that Respondent registered the <dixiecup.com> domain name in order to capitalize on the fame of the DIXIE mark and attract unsuspecting consumers to Respondent’s directory website. Complainant argues that Respondent intended for the disputed domain name to create confusion in the minds of Internet users seeking Complainant to increase the probability that they would click on the displayed links and generate profit for Respondent in the form of click-through fees. The Panel agrees with Complainant and concludes that Respondent’s efforts to use Complainant’s mark for its own commercial gain by attracting and confusing consumers indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant’s rights in the DIXIE mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements for cups and various dispenser products, which are the same types of products offered by Complainant, indicates that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant’s arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Hoems Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). The Panel agrees with Complainant regarding Respondent’s actual knowledge, however, concluding that Respondent registered the <dixiecup.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dixiecup.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 27, 2012
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