Omaha Steaks International, Inc. v. Cyber Domain Services Pvt.Ltd.
Claim Number: FA1401001539558
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Cyber Domain Services Pvt.Ltd. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahasteake.com>, registered with Tirupati Domains and Hosting Private Limited.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2014; the National Arbitration Forum received payment on January 16, 2014.
On January 17, 2014, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <omahasteake.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@omahasteake.com. Also on January 29, 2014, 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 19, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the business of promoting and selling food, cookbooks, seasoning and other products.
2. Complainant has registered the OMAHA STEAKS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,458,802 registered on Sept. 22, 1987).
3. Respondent registered the <omahasteake.com> domain name on December 6, 2006.
4. Respondent has using the <omahasteake.com> domain name to list hyperlink advertisements that are either competitive or wholly unrelated to Complainant’s business conducted under the OMAHA STEAKS trademark.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it uses the OMAHA STEAKS mark to promote and sell food, cookbooks, seasoning, and other products. Complainant has registered the OMAHA STEAKS mark with the USPTO (e.g., Reg. No. 1,458,802 registered on Sept. 22, 1987). The Panel finds that registration with the USPTO satisfies Complainant’s obligation to show rights under Policy ¶ 4(a)(i), regardless of whether Respondent dwells in the United States or elsewhere. See, e.g., Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OMAHA STEAKS mark. Complainant next argues that Respondent’s <omahasteake.com> domain name merely misspells the OMAHA STEAKS mark and adds a gTLD. Complainant argues that such alterations illustrate a confusing similarity between the mark and the domain name. The Panel agrees that the minor spelling change, the deletion of the mark’s spacing, and the addition of a gTLD do not defeat the confusing similarity of this domain name. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainant’s mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OMAHA STEAKS trademark and to use it in its domain name, making only minor alterations to the spelling of the trademark;
(b) Respondent has then used the disputed domain name to list hyperlink advertisements that are either competitive or wholly unrelated to Complainant’s business conducted under the OMAHA STEAKS trademark;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not commonly known by the <omahasteake.com> domain name. Complainant submits that the domain name’s WHOIS information shows no connection, and there is no license or other consensual agreement to give Respondent any right to use the OMAHA STEAKS mark in a domain name. The Panel notes that the WHOIS information lists “Cyber Domain Services Pvt.Ltd.” as the registrant of record for the <omahasteake.com> domain name. The Panel agrees that there is no basis for finding that Respondent is commonly known by the <omahasteake.com> domain name under Policy ¶ 4(c)(ii). See, e.g., LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”);
(e) Complainant also submits that Respondent is using the <omahasteake.com> domain name to list hyperlink advertisements that are either competitive or wholly unrelated to the OMAHA STEAKS business. Complainant contends that such a use is not a bona fide offering of goods or services. The Panel agrees that UDRP panels traditionally decline to find that hyperlink advertisements to competing or unrelated businesses constitute a Policy ¶ 4(c)(i) bona fide use when the complainant holds a prior and registered trademark. See, e.g., Morgan Stanley v. Helen Oily / Helen Oily, FA 1534319 (Nat. Arb. Forum Jan. 20, 2014) (“[P]rior UDRP panels have concluded that using a confusingly similar domain name to resolve to a website featuring advertisements for third-parties that compete with complainant is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of a domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).”). The Panel therefore concludes that Respondent’s use of the <omahasteake.com> domain name does not fall within the protective bounds of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has listed the <omahasteake.com> domain name for sale in a show of bad faith. The Panel notes that the DomainTools WHOIS page for the <omahasteake.com> domain name indicates that “The Owner of the domain you are researching has listed it for sale.” See Compl., at Attached Ex. I. The Panel agrees that such a general offer of the domain name for public sale evidences some degree of bad faith under Policy ¶ 4(b)(i). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Nat. Arb. Forum Jan. 17, 2014) (“Respondent’s offer to sell the disputed domain name demonstrates its bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i).”).
Secondly, according to Complainant, Respondent is no stranger to UDRP proceedings and has previously been found to have registered domain names in bad faith. See Compl., at Attached Ex. H. The Panel notes that Respondent has been ordered to transfer domain names under the UDRP in prior cases. See Euromarket Designs, Inc., d/b/a Crate & Barrel v. Cyber Domain Services Pvt.Ltd., FA 1470528 (Nat. Arb. Forum Jan. 2, 2013); see also Montres Breguet S.A. v. Cyber Domain Services Pvt.Ltd., FA 1413687 (Nat. Arb. Forum Dec. 12, 2011); see also Universidad Autónoma de Nuevo León v. Cyber Domain Services Pvt.Ltd., D2010–2050 (WIPO Jan. 21, 2011). The Panel concludes that these prior UDRP decisions evidence Respondent’s Policy ¶ 4(b)(ii) bad faith. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Thirdly, Complainant claims that Respondent’s decision to host competitive hyperlinks on the <omahasteake.com> domain name’s website showcases intent to disrupt Complainant’s business unfairly. The Panel notes that the disputed domain name’s resolving website includes advertisements to Complainant’s own business along with links to competing “Chicago Steak Co.” products. See Compl., at Attached Ex. H. The Panel agrees that such offerings evidence a Policy ¶ 4(b)(iii) bad faith intent to disrupt Complainant’s legitimate OMAHA STEAKS business. See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Fourthly, Complainant also argues that Respondent is generating advertising revenue through the domain name’s hyperlink advertisements. Complainant explains that Internet users click on these hyperlinks because of a likelihood of confusion—Internet users may believe that Complainant has approved, endorsed, or authorized the hyperlinks. The Panel again notes that the domain name has been monetized with hyperlink advertisements. See Compl., at Attached Ex. H. The Panel agrees that the use of a confusingly similar domain name to host related commercial advertising creates a Policy ¶ 4(b)(iv) likelihood of confusion through which Respondent generates advertising revenue. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“Use of a confusingly similar domain name for purposes of promoting monetized hyperlinks has traditionally been found to be sufficient evidence to find a Policy ¶ 4(b)(iv) likelihood of confusion for a respondent’s commercial gain and bad faith.”).
Fifthly, Complainant argues that Respondent’s typosquatting behavior is independently sufficient evidence of bad faith. The Panel notes that despite the removal of spacing and the addition of a gTLD, the domain name makes a single character alteration to the OMAHA STEAKS mark. The Panel finds that such a subtle variation indicates that Respondent sought to typosquat on the OMAHA STEAKS mark. The Panel further finds that such typosquatting behavior indicates bad faith pursuant to Policy ¶ 4(a)(iii). See, e.g., Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Dragan Platic / Poste restante, FA 1537469 (Nat. Arb. Forum Feb. 13, 2014) (finding that the <advavceautoparts.com> domain name was sufficiently typosquatted from the complainant’s ADVANCE AUTO PARTS mark so as to establish a basis of Policy ¶ 4(a)(iii) bad faith).
Sixthly, Complainant argues that Respondent knew of Complainant’s interest in the OMAHA STEAKS mark prior to the registration of the disputed <omahasteake.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Seventhly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OMAHA STEAKS mark in and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omahasteake.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 20, 2014
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