Omaha Steaks International, Inc. v. 21562719 Ont Ltd
Claim Number: FA1402001542796
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahasteeks.com>, which is registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 10, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <omahasteeks.com> domain name is regis-tered with FABULOUS.COM PTY LTD. and that Respondent is the current reg-istrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has there-by agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of March 11, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@omahasteeks.com. Also on February 19, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 March 14, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 has used the OMAHA STEAKS service mark continuously since 1968 in connection with the manufacturing, marketing and distribution of prem-ium steaks, red meats and other gourmet foods.
Complainant's markets include Internet-based food sales.
Complainant holds United States Patent and Trademark Office (“USPTO”) regis-trations for the OMAHA STEAKS service mark (including Registry No. 1,458,802, registered September 22, 1987).
Respondent registered the <omahasteeks.com> domain name on or about December 17, 2003.
The <omahasteeks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to register any domain name incorporating Complainant's OMAHA STEAKS mark.
Respondent uses the domain name to direct Internet users to Complainant's website through its affiliate program, which is in violation of the affiliate agree-ment that governs Respondent's conduct as an affiliate of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent is a serial cyber-squatter who has engaged in a pattern of bad faith domain name registrations.
The domain name is an instance of typo-squatting.
As a member of Complainant's affiliate program, Respondent knew of Com-plainant's rights in the OMAHA STEAKS when it registered the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the OMAHA STEAKS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Canada). See Konin-klijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demon-strate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <omahasteeks.com> domain name is confusingly similar to Complainant’s OMAHASTEAKS service mark. The domain name represents a simple misspelling of Complainant’s.COM mark, replacing the second instance of the letter “a” with an “e” and appending the generic top Level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save it from the realm of confusing similarity under the stand-ards of the Policy. See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter).
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding, because every domain name requires a gTLD, that adding a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <omahasteeks.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to register domain names incorporating Complainant's OMAHA STEAKS mark. Moreover, the WHOIS information for the domain name identi-fies the registrant only as “21562719 Ont Ltd,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the <omahasteeks.com> domain name so as to have acquired rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding, under Policy ¶ 4(c)(ii), that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a UDRP com-plainant’s mark and failed to submit evidence showing that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent uses the <omahasteeks.com> domain name to direct Internet users to Complainant's website through its affiliate program, which is in violation of the affiliate agreement that governs Respondent's conduct as an affiliate of Complainant. In the circumstances here presented, we may comfortably pre-sume that Respondent seeks to profit from the receipt of commissions or similar income from the operation of the website resolving from the contested domain name. This employment of the domain name is neither a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010):
The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent is a serial cyber-squatter that has demonstrated a pattern of bad faith registration and use of domain names derived from the marks of others, as shown in the decisions of panels in UDRP proceedings in which domain names have been transferred to various complainants. See, for example, Homer TLC, Inc. v. 21562719 Ont Ltd, FA 1526817 (Nat. Arb. Forum Dec. 4, 2013); Amerisure Mut. Ins. Co. v. 21562719 Ont Ltd, FA 1532261(Nat. Arb. Forum Jan. 8, 2014); and Kellogg N. Am. Co. v. 21562719 Ont Ltd, FA 1534092 (Nat. Arb. Forum Jan. 15, 2014). Under Policy ¶ 4(b)(ii), this pattern of abusive registration and use of domain names stands as proof of bad faith in the registration and use of the instant domain name. 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 a respondent had been subject to several UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).
We are also convinced by the evidence that Respondent’s attempt to profit from the confusion caused among Internet users by its employment of the disputed <omahasteeks.com> domain name, which is confusingly similar to Complainant’s OMAHA STEAKS service mark, likewise shows bad faith in the registration and use of the domain name. See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding, under Policy ¶ 4(a)(iii), that a respondent reg-istered and used the <deluxeform.com> domain name in bad faith by directing Internet users to a UDRP complainant’s <deluxeforms.com> domain name, thus receiving a commission from that complainant for each such referral through its affiliate program).
In addition, it is clear from the record that Respondent knew of Complainant and its rights in the OMAHA STEAKS service mark when it registered the disputed <omahasteeks.com> domain name. This is further proof of Respondent’s bad faith in registering the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a contested domain name where a respondent was "well-aware” of a UDRP complainant's YAHOO! mark at the time of its domain name registration).
Finally, under this head of the Policy, it is evident that the <omahasteeks.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in creating a domain name in order to take advantage of common typing errors made by Internet users in entering in their web browsers the marks of enterprises with which they wish to do business. Typo-squatting is independent proof of bad faith in the registration and use of a domain name. See Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), finding, under Policy ¶ 4(a)(iii), that typo-squatting is “inherently para-sitic and of itself evidence of bad faith.”
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <omahasteeks.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 23, 2014
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