Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd
Claim Number: FA1503001610122
Complainant is Omaha Steaks International, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is DN Manager / Whois-Privacy.Net Ltd (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omahastecks.com>, 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 Forum electronically on March 18, 2015; the Forum received payment on March 18, 2015.
On Mar 19, 2015, Fabulous.Com Pty Ltd confirmed by e-mail to the Forum that the <omahastecks.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd 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 June 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2015 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@omahastecks.com. Also on June 8, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the OMAHA STEAKS mark in conjunction with its business as a leading provider of beef and related products.
Complainant has rights in the OMAHA STEAKS service mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,458,802, registered September 22, 1987).
Respondent registered the domain name <omahastecks.com> on or about December 21, 2005.
The domain name is confusingly similar to Complainant’s OMAHA STEAKS service mark.
Respondent has not been commonly known by the domain name.
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Respondent is not sponsored by or affiliated with Complainant in any way. |
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Complainant has not given Respondent permission to use Complainant's OMAHA STEAKS mark in a domain name. |
Respondent uses the domain name to host click-through ads with links to third-party websites, which are operated for Respondent’s commercial gain.
This use is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has listed the domain name for sale to the public.
Respondent’s registration and use of the domain name is an instance of typo-squatting.
Respondent 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 has been 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 cancelled 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 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) (finding that a respondent’s failure to respond allows all reasonable 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 Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that a UDRP complainant, who had registered the ENTERPRISE RENT-A-CAR mark with the USPTO, thereby successfully established rights in the mark sufficient to satisfy the requirements of ¶ 4 (a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Vanuatu). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding, under Policy ¶ 4(a)(i), that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the 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 <omahastecks.com> domain name is confusingly similar to Complainant’s OMAHA STEAKS service mark. The domain name differs from the mark only in that the domain name substitutes the letter “a” in the word “steak” with the letter “c” and adds the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
It is well established that employing a single-letter misspelling of the mark of another in a domain name creates confusing similarity between the two in a process denominated typo-squatting. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s domain names were confusingly similar to a UDRP complainant’s mark where the domain names were common misspellings of the mark).
Likewise, because every domain name requires a generic Top Level Domain, the addition of the gTLD “.com” to Complainant’s mark in forming the disputed domain name is irrelevant to a confusing similarity analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to a UDRP complainant’s POMELLATO mark because the generic gTLD “.com” after the mark is not relevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case that Respondent lacks rights to or legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must first make a prima facie showing that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent 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 Respondent does not have rights or legitimate interest in the … 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 … domain names.
We will therefore examine the record before us, in light of this principle and the considerations set out in Policy ¶ 4(c), to determine 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 alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <omahastecks.com> domain name, and that Complainant is not affiliated with Respondent in any manner and has not authorized Respondent to use its OMAHA STEAKS mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “DN Manager/ Whois-Privacy.net Ltd.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in the domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <omahastecks.com> domain name, which we have found is confusingly similar to Complainant’s OMAHA STEAKS mark, to host click-through ads with links to third-party websites, which links are operated for Respondent’s commercial gain. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), either of which might be found to establish rights to or legitimate interests in the domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that using a domain name which is identical or confusingly similar to the mark of another to obtain click-through fees via sponsored links to third-party websites is not either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm a UDRP respondent’s rights to or interests in the domain name under those provisions of the Policy).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the domain name <omahastecks.com>, which is confusingly similar to Complainant’s OMAHA STEAKS mark, to attempt to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
We are also convinced by the evidence that the contested <omahastecks.com> domain name is an instance of typo-squatting, which takes advantage of common errors made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business. Typo-squatting is independent proof of Respondent’s bad faith in the registration and use of the domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
For these reasons, the Panel 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 <omahastecks.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 9, 2015
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