Indian River Select, LLC v. smokymountaincountryhams
Claim Number: FA1301001481621
Complainant is Indian River Select, LLC (“Complainant”), represented by Carl J. Spagnuolo of McHale & Slavin, P.A., Florida, USA. Respondent is smokymountaincountryhams (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indianriverselect.com>, registered with DNC HOLDINGS, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.
On January 23, 2013, DNC HOLDINGS, INC. confirmed by e-mail to the National Arbitration Forum that the <indianriverselect.com> domain name is registered with DNC HOLDINGS, INC. and that Respondent is the current registrant of the name. DNC HOLDINGS, INC. has verified that Respondent is bound by the DNC HOLDINGS, 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 January 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@indianriverselect.com. Also on January 30, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Complainant has rights in the INDIAN RIVER SELECT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,120,847 registered Dec. 16, 1997).
2. Complainant has continuously used the mark for at least ten years.
3. Respondent’s <indianriverselect.com> domain name is identical to Complainant’s INDIAN RIVER SELECT mark.
4. Respondent has no rights or legitimate interests in the <indianriverselect.com> domain name.
5. Respondent is using the disputed domain name to resolve to a parked webpage.
6. Respondent’s business enterprises do not utilize the terms “Indian,” “River,” or “Select.”
7. Respondent has registered and is using the <indianriverselect.com> domain name in bad faith by depriving Complainant’s use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Indian River Select, LLC. Complainant’s “Indian River Select” juice brand is well known with its products widely distributed throughout the southeastern United States and sold in major retail supermarkets. Complainant has rights in the INDIAN RIVER SELECT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,120,847 registered Dec. 16, 1997). Complainant has continuously used the mark for at least ten years.
Respondent, smokymountaincountryhams, registered the disputed domain name on December 13, 2000. Respondent is using the disputed domain name to resolve to a parked webpage.
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.
Complainant’s registration of the INDIAN RIVER SELECT mark with the USPTO is sufficient to establish rights in the mark. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the INDIAN RIVER SELECT mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that its INDIAN RIVER SELECT mark is identical in every material aspect to Respondent’s <indianriverselect.com> disputed domain name. Respondent has removed the spaces in Complainant’s INDIAN RIVER SELECT mark and added the generic top-level domain (“gTLD”) “.com.” These variations are insufficient to distinguish a disputed domain name from a given mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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). Therefore, the Panel finds that Respondent’s <indianriverselect.com> disputed domain name is identical to Complainant’s INDIAN RIVER SELECT mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t 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).
Complainant claims that Respondent has no rights or legitimate interest in the <indianriverselect.com> disputed domain name because there is no evidence that Respondent was ever commonly known by the <indianriverselect.com> domain name. Complainant argues that neither Respondent nor its associated companies has ever engaged in business using the words, “Indian,” “River,” or “Select.” The WHOIS information for the <indianriverselect.com> disputed domain name lists the Registrant as “smokymountaincountryhams.” Previous panels have found that a respondent had no rights or legitimate interests in a disputed domain name where the record produced no affirmative evidence indicating a correlation between the respondent and the disputed domain name. 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). The Panel finds that Respondent is not commonly known by the disputed domain name and therefore does not have rights or a legitimate interest in the <indianriverselect.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interest in the <indianriverselect.com> disputed domain name as it makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <indianriverselect.com> domain name resolves to a parked webpage. The resolving website features the <indianriverselect.com> domain name along with the heading “This Domain is Registered at Directnic.com.” Previous panels have found that passively holding a website linked to a domain name that is confusingly similar or identical to a complainant’s registered mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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 Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent has no rights or legitimate interest in the <indianriverselect.com> disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that during a phone conference with Respondent, Respondent offered to “lease” the use of the <indianriverselect.com> domain name to Complainant. Previous panels have found that a respondent’s willingness to lease a disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(i). See Aha! – Agentur Fur Handelsmarketing GMBH v. Continue Software GmbH, FA 109376 (Nat. Arb. Forum May 24, 2002) (holding that “the apparent willingness of Respondent to sell or lease the domain name from the onset” is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i)). The Panel finds that Respondent’s willingness to lease the <indianriverselect.com> domain name to Complainant shows bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent is disrupting its business through the use of the parked website resolving from the <indianriverselect.com> domain name and is also preventing Complainant from using a domain name that is identical to its registered mark. Respondent’s use of the <indianriverselect.com> domain name diverts Complainant’s potential customers to a parked page featuring the heading “This Domain is Registered at Directnic.com.” The <indianriverselect.com> domain name resolves to the registrar’s page containing no links. The Panel finds that Respondent has not made an active use of the <indianriverselect.com> domain name which is evidence of bad faith use and registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name 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 Policy).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indianriverselect.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 11, 2013
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