Frontier Distribution LLC v. Shannon Hamilton
Claim Number: FA1503001611518
Complainant is Frontier Distribution LLC (“Complainant”), represented by Robert W. Hoke of Nyemaster Goode, P.C., Iowa, USA. Respondent is Shannon Hamilton (“Respondent”), represented by Paul Southwick, Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frontierherbs.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
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 these proceedings.
Peter Müller as Panelist.
Complainant electronically submitted a Complaint to the Forum on March 26, 2015; the Forum received payment on March 30, 2015.
On March 26, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and individuals listed on Respondent’s registration as technical, administrative, and billing contacts, and to the following email address: postmaster@frontierherbs.com. In addition, on April 2, 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 individuals listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 22, 2015.
Complainant submitted a timely Additional Submission on April 27, 2015 in accordance with the Forum's Supplemental Rule #7.
Respondent submitted a timely Additional Submission on April 29, 2015 in accordance with the Forum's Supplemental Rule #7.
On April 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Peter Müller as Panelist.
Having reviewed the communication 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 “Frontier Herbs” as a trade name to identity its business segment focusing on herbs and spices and, in addition, claims rights in the common-law trademark for “FRONTIER” based on its use of such a mark in connection with herbs and spices since as early as 1986. In addition, Complainant is the current owner of inter alia U.S. trademark registration no. 2,263,361 “FRONTIER”, which was applied for on March 18, 1996 and registered on July 20, 1999, claiming first use in commerce as early as 1985, and U.S. trademark registration no. 4,616,732 “FRONTIER”, which was applied for on February 10, 2014 and registered on October 7, 2014. Complainant provides information on its products online at www.frontiercoop.com and offers its products for sale at www.amazon.com. On January 12, 2015, Complainant sent a letter to Respondent requesting that Respondent transfer the Domain Name to Complainant. The letter remained unanswered by Respondent.
The Domain Name is identical to Complainant’s trade name “Frontier Herbs.” In addition, the Domain Name is virtually identical to, confusing and similar to Complainant’s FRONTIER trademark, as the dominant component of the Domain Name is “FRONTIER”. Furthermore, the additional word “HERBS” merely describes goods for which Complainant is known to supply.
Respondent has no rights or legitimate interest in respect of the Domain Name, as it has no federal trademark registration for nor any other rights in FRONTIER or FRONTIER HERBS, as Respondent has not, at any time, been commonly known as FRONTIER HERBS. Complainant has not licensed or otherwise permitted Respondent to use any of its marks or to apply for any domain names incorporating any of its marks. Respondent is using the Domain Name solely to redirect traffic to a commercial website at www.libertynatural.com of Liberty Natural Products, Inc., a company that sells herbs and is one of Complainant’s competitors. Respondent has not, at any time, used the disputed domain name in connection with a bona fide offering of goods or services, and Respondent has not, at any time, made a legitimate noncommercial or fair use of the disputed domain name.
Complainant's FRONTIER trademark was in use in commerce before Respondent registered the Domain Name and Complainant applied for registration of its FRONTIER trademark before Respondent registered the Domain Name. Respondent, like everyone else in its industry, must have known of Complainant’s FRONTIER trademark and could not have chosen or subsequently used the word “FRONTIER” in the domain name for any reason other than to trade on that name and to confuse Internet users, which is evidence of bad faith. Respondent’s use of the Domain Name constitutes bad faith under the Policy in that it is forwarding the Domain Name to a website of one of Complainant’s competitors. In addition, Respondent’s failure to respond to Complainant’s letter is further evidence of bad faith. Furthermore, in selecting a domain name, it was Respondent's responsibility to ensure that the registration of the domain name does not infringe or violate third party rights. Finally, the mere holding of the Domain Name without using it for a legitimate purpose amounts to an implied offer to sell the domain name, which constitutes bad faith as well.
B. Respondent
“Frontier Herbs” is not a trade name of Complainant because Complainant does not use “Frontier Herbs” in order to identify its business. Complainant failed to attach any evidence showing that it has used or continues to use the name “Frontier Herbs.” Additionally, Complainant is not the owner of the FRONTIER HERBS trademark.
Respondent has rights and/or legitimate interests in the Domain Name because Respondent has been in the vitamins, minerals, herbs and supplements ("VMHS") industry for twenty-five years, approximately ten years before its purchase of the Domain Name. Moreover, Respondent has possessed the Domain Name for approximately fifteen years, yet Complainant, who claims to have been using the FRONTIER trademark in connection with the sale of herbs and spices since 1986, has never previously asked Respondent to give up the domain name or communicated any interest in the Domain Name to Respondent.
Respondent acquired the Domain Name fifteen years ago and has not received consideration in excess of Respondent's out-of-pocket costs directly related to the domain name from a competitor of Complainant for use of the domain name. Moreover, during this fifteen-year period, Complainant has not asserted any rights to the Domain Name or requested that the Domain Name be transferred from Respondent to Complainant.
C. Additional Submissions
Complainant says Respondent’s counsel contacted Complainant’s counsel on April 21, 2015 offering to sell the Domain Name and settle the parties’ dispute for US$10,000, which is additional evidence of bad faith.
With regard to the email of April 21, 2015, Respondent says that it denied the allegations of Complainant's Amended Complaint but offered to resolve the dispute in order to avoid the costs of litigation. Furthermore, Respondent submits that such a settlement offer to Complainant represents a good faith effort in order to reach a solution and was based on Respondent's good faith belief that Respondent will prevail in these proceedings for the reasons set out in the Response.
Complainant has established all the elements entitling it to relief.
In accordance with Paragraph 15(a) of the Rules this Panel is required 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 in order to obtain an appropriate 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;
(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 claims to have registered the FRONTIER trademark with the USPTO (e.g., Reg. No. 2,263,361, registered July 20, 1999), and argues such registrations as evidence of rights in a mark per Policy ¶ 4(a)(i). The Panel finds that Complainant has rights in the FRONTIER trademark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
In addition, Complainant argues that the Domain Name is confusingly similar to Complainant’s FRONTIER mark, as the Domain Name merely adds the descriptive term “herbs” which defines the goods for which Complainant is known. The domain also adds the “.com” gTLD. Panels have seen such alterations as inadequate in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
This Panel finds that the Domain Name is confusingly similar to the FRONTIER trademark in accordance with Policy ¶ 4(a)(i).
In accordance with the Panel’s view is consensus view, 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). Thereafter, the burden shifts to Respondent to show that 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 complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to 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.”).
Complainant argues that Respondent has no trademark registration for FRONTIER or FRONTIER HERBS and that it is not commonly known by such marks, nor has Complainant authorized Respondent to use variations of the FRONTIER trademark in connection with domain name registrations. Complainant includes the page which the disputed domain name redirects, claiming “Liberty Natural Products” as a competitor. See Compl., at Attached Annex 7. In light of the available evidence, the Panel concludes that Respondent is not commonly known by the Domain Name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent’s Domain Name redirects Internet users to a direct competitor of Complainant, which evinces neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Panels have seen such use of disputed domain names as failing to evince rights under Policy ¶¶ 4(c)(i) or (iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because respondent used the domain name to take advantage of complainant's mark by diverting Internet users to a competing commercial site). Therefore, this Panel agrees that Respondent, which is not a reseller of Complainant’s products, has not used the Domain Name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant has established that Respondent has no rights or legitimate interests in the Domain Name under Policy ¶¶ 4(a)(ii) and 4(c).
Complainant argues that it is inconceivable that Respondent, like everyone else in its industry, could have registered the Domain Name without actual knowledge of Complainant's rights in the mark. Respondent itself admits that it has been in the vitamins, minerals, herbs and supplements ("VMHS") industry for twenty-five years, approximately ten years before its purchase of the Domain Name. The Panel finds that Respondent must have had actual knowledge of Complainant's rights in the FRONTIER trademark prior to registering the Domain Name which is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting respondent's contention that it did not register the disputed domain name in bad faith since the panel found that respondent had knowledge of complainant's rights in the UNIVISION mark when registering the disputed domain name).
As to bad faith use, Complainant inter alia asserts that Respondent uses Complainant’s FRONTIER trademark to intentionally attempt to attract Internet users to Respondent’s competing website for commercial profit. The Panel finds that by using the Domain Name in order to forward Internet users to a website offering Complainant’s competitors products for sale, Respondent was, in all likelihood, trying to divert traffic intended for Complainant’s website to its own for commercial gain as set out under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where respondent registered and used a domain name confusingly similar to complainant’s mark to attract users to a website sponsored by respondent).
Complainant has established that the Domain Name was registered and is being used in bad faith under Policy ¶¶ 4(a)(iii) and 4(b)(iv).
Respondent argues that, during the fifteen-year period since the registration of the Domain Name, Complainant has not asserted any rights to the Domain Name or requested that the Domain Name be transferred from Respondent to Complainant. Complainant does not explain any justification of why it delayed, for a period of fifteen years, before bringing a complaint under the UDRP.
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Given that Respondent has not acquired rights or legitimate interests by using the Domain Name and has registered the Domain Name in bad faith, the Panel finds that the delay in filing the present proceeding does not affect the outcome. See City Bank v. Domain Admin / Inavit, Inc., FA 1564337 (Nat. Arb. Forum July 21, 2014) (finding that “lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name. As laches is a defense mechanism for Respondent which finally affects the arguments regarding the elements of rights or legitimate interests in the disputed domain name and bad faith registration and use, the delay should be taken into account in those elements.”); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Name be TRANSFERRED from Respondent to Complainant.
Peter Müller, Panelist
Dated: May 12, 2015
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