Blue Diamond Growers v. L Wood
Claim Number: FA1704001728775
Complainant is Blue Diamond Growers (“Complainant”), represented by Susan G. O'Neill of Hanson Bridgett LLP, California, U.S.A. Respondent is L Wood (“Respondent”), Virgin Islands, U.S..
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <bluediamondkings.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us>, registered with Godaddy.Com, Llc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Neil A. Brown QC, Dawn Osborne and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on April 24, 2017..
On April 25, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <bluediamondkings.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2017 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@bluediamondalmondrancher.us, postmaster@mybluediamond.us, postmaster@bluediamondrancher.us, postmaster@bluediamondkings.us, postmaster@mybluediamondalmonds.us, postmaster@bluediamondgower.us, postmaster@bluediamondgowers.us, postmaster@mybluediamondgower.us, postmaster@mybluediamondgowers.us. Also on April 28, 2017, 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.
A timely Response was received and determined to be complete on May 15, 2017.
On May 26. 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Neil A. Brown QC, Dawn Osborne and Dennis A. Foster (Chair) as Panelists.
Complainant requests that the <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us> domain names be transferred from Respondent to Complainant; and that the <bluediamondkings.us> domain name be canceled.
A. Complainant
- Complainant, founded in 1910 and domiciled in the United States, is the world’s largest almond processor and marketer. With 2016 gross revenues of $1.5 Billion, Complainant is headquartered in California, where more than 80% of the world's almond supply is grown.
- Complainant markets its products under several trademarks registered with the United States Patent and Trademark Office ("USPTO"), including, among others, BLUE DIAMOND, BLUE DIAMOND ALMONDS and BLUE DIAMOND GROWERS. Complainant spends considerable sums to globally promote and advertise its marks and products, including a sponsorship agreement with the Sacramento Kings, a professional basketball team located in California.
- Complainant has also registered several domain names, all of which resolve to the website at its primary domain name, <bluediamondalmond.com>.
- All of the disputed domain names, <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <bluediamondkings.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us>, are confusingly similar to at least one of Complainant’s registered marks. The names commonly contain one or more of the marks along with incidental generic terms such as "my," "rancher" or "kings;" or with a misspelling of the words "grower" or "growers."
- Complainant has contacted Respondent and tried to resolve this dispute. However, not only did Respondent fail to respond in a manner that might facilitate a suitable resolution, he continued to register illegitimate domain names that contain Complainant's marks.
- Respondent grows almonds and sells them to Complainant, but has no rights or legitimate interests in the disputed domain names. He is not the owner or beneficiary of any trademarks corresponding to the names. Complainant has not licensed or permitted Respondent, or any other grower/seller, to use Complainant's marks or to incorporate them into any domain names.
- Respondent is not commonly known as any of the disputed domain names. Moreover, Respondent uses the disputed domain names to host websites that offer pay-per-click links to third party websites, some of which are owned by Complainant's competitors. Such use does not constitute a bona fide offering of goods or services.
- Respondent's application with the USPTO to trademark ALMOND GROWERS fails to accord Respondent rights or legitimate interests in the disputed domain names, since the application has not been fully reviewed. Moreover, since the application occurred after correspondence from Complainant concerning transfer of the disputed domain names, the application is most likely a defensive move with respect to Complainant's claims and does not give rise to such rights or interests.
- The disputed domain names were registered and are being used in bad faith. Respondent has registered and used the disputed domain names with full knowledge of Complainant and Complainant’s rights in its marks. Also, Respondent’s registration of twenty domain names incorporating Complainant’s marks shows that he is engaged in a pattern of bad faith registration and use. That pattern is exemplified further by Respondent's illegitimate registration of other domain names that contain world-famous marks in which Respondent likely possesses no rights. Moreover, Respondent’s use of the disputed domain names to resolve to websites that display unrelated and competing pay-per-click links demonstrates bad faith.
B. Respondent
- Respondent is currently a grower and supplier of almonds to Complainant.
- Respondent’s registration and use of the disputed domain names has been done to secure and help to maintain the integrity of Complainant’s brand.
- Respondent’s use of the disputed domain names would be only to promote the products which it grows exclusively for Complainant.
- Respondent regrets that this situation has regressed to the point of this UDRP filing.
Founded in 1910, Complainant has become the world leader in the processing and marketing of almonds. In furtherance of its business, Complainant has registered several trademarks with the USPTO, including BLUE DIAMOND (e.g., Reg. No. 159,301, registered Sept. 26, 1922); BLUE DIAMOND ALMONDS (e.g., Reg. No. 3,711,266, registered Nov. 17, 2009); and BLUE DIAMOND GROWERS (e.g., Reg. No. 4,035,360, registered Oct. 4, 2011).
Respondent registered and owns the disputed domain names, <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <bluediamondkings.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us>, which have been registered on various dates ranging from March 2016 through January 2017. The disputed domain names all resolve to websites that display links to third party websites, some of which are owned by Complainant's competitors.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has provided the Panel with ample evidence (Complaint Annex 3) of its ownership of USPTO registrations for the trademarks BLUE DIAMOND, BLUE DIAMOND ALMONDS and BLUE DIAMOND GROWERS. Thus, the Panel concludes that Complainant possesses sufficient rights in those marks to continue with these proceedings. See Expedia, Inc. v. Emmerson, FA 873346 (Forum Feb. 9, 2007) ("Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i)."); see also Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) ("Complainant established rights in the PAISLEY PARK mark by registering it with the United States Patent and Trademark Office.").
The Panel observes that none of the disputed domain names is exactly the same as the marks owned by Complainant, and so none can be claimed to be identical to those marks. However, the Panel notes that the differences between the disputed domain names and various marks are inconsequential when evaluated for confusing similarity. All of the names contain the country code top level domain, ".us", which is irrelevant for such an evaluation. See Farouk Sys. Inc. v. King , FA 1618704 (Forum June 19, 2015) ("The ccTLD '.us' designation is inconsequential to a Policy ¶ 4(a)(i) analysis"); see also Mattel, Inc. v. Unknown, FA 490083 (Forum July 11, 2005).
Specifically, the disputed domain names, <bluediamondrancher.us> and <bluediamondalmondrancher.us>, merely delete spaces and add the generic and descriptive term, "rancher", to Complainant's BLUE DIAMOND and BLUE DIAMOND ALMONDS marks respectively (the "s" is also deleted from this second mark in the second name), which still leaves the names confusingly similar to the respective mark in the Panel's view. Similarly, the inclusion of "my" in the domain names, <mybluediamond.us> and <mybluediamondalmonds.us>, does not mitigate the confusing similarity between those names and Complainant's BLUE DIAMOND and BLUE DIAMOND ALMONDS marks, respectively. See TPI Holdings, Inc. v. Armengol, D2009-0361 (WIPO May 19, 2009) (finding <autotradertransactions.com> to be confusingly similar to the mark AUTO TRADER); see also NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding <myniit.com> to be confusingly similar to the NIIT trademark).
With respect to the disputed domain names <bluediamondgower.us> and <bluediamondgowers.us>, the dropping of the "r" and/or "s" from the last word in the names creates an immaterial distinction from the BLUE DIAMOND GROWERS mark owned by Complainant. See Lockheed Martin Corp. v. maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding <neimanmacus.com> to be confusingly similar to complainant’s NEIMAN MARCUS mark). Once again, adding the possessive "my", as in the case of the disputed domain names, <mybluediamondgower.us>, and <mybluediamondgowers.us>, does not remedy the confusing similarity between those names and said mark. See Sonic Foundry, Inc. v. Allan Carlton, D2012-2389 (WIPO Jan. 25, 2013) ("A number of UDRP panels have found that adding the term 'my' as prefix to a registered trade mark does not diffuse the confusingly similar nature between the domain name and complainant’s trademark."); see also NIIT Ltd. v. Venkatram, supra.
Finally, the disputed domain name, <bluediamondkings.us>, suffers from the same lack of distinction from the BLUE DIAMOND mark as the names analyzed above, since the added generic term "kings", is clearly subordinate to the dominating terms comprised of Complainant's mark. The likely confusion is also exacerbated, in the Panel's opinion, due to Complainant's affiliation with the Sacramento Kings basketball team. See Yves Saint Laurent v. Xian Wen, D2016-2622 (WIPO Feb. 16, 2017) ("The disputed domain name [<yslkings.com.] comprises the textual elements of the [YSL] Mark in its entirety, together with the non-distinctive word 'kings', which does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.).
As a result of the conclusions reached above, the Panel rules that Complainant has prevailed with respect to the first element required under the Policy.
Although Complainant must bear the burden of proving that Respondent has no rights or legitimate interests in the disputed domain names, the Panel will follow the principle, well-established by prior Policy panels, that Complainant need sustain only a prima facie case to that effect whereupon the burden then shifts to Respondent to rebut that case. See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
As noted above, Complainant has demonstrated to the Panel's satisfaction that all of the disputed domain names are confusingly similar to trademarks owned by Complainant. Moreover, Complainant states clearly, without contradiction from Respondent, that no license or permission has been granted by Complainant to Respondent to use those marks for any purpose. Therefore, the Panel believes that Complaint has presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent contends, and Complainant concurs, that Respondent is an almond supplier to Complainant. The Panel, however, can find no prior UDRP case which recognizes that sort of commercial relationship -- as opposed to being a reseller, distributor or service provider -- as creating rights or legitimate interests for a respondent in disputed domain names that fully incorporate a complainant's valid trademark. Moreover, nothing in the certificate, letters or crop agency agreement presented by Respondent as evidence (Respondent Annexes 1-4) suggests that Complainant has granted to Respondent any right to use Complainant's marks or has in any other way given authorizations that might create for Respondent rights or legitimate interests in the disputed domain names.
Respondent argues that he has registered the disputed domain names to benefit Complainant in protecting its brand and thus, presumably, safeguarding Complainant's revenues. This might be in Respondent's short-term commercial interest, since he is paid by Complainant to supply almonds. Yet presumably Respondent might just as well sell his goods to those competitors. Again, the weakness of this argument is shown by the lack of any prior UDRP case where such a contention can be cited as giving rise to a legitimate interest in a disputed domain name. Further, it appears to confusingly link Respondent directly with Complainant in a way that is not authorized and, since its goodwill is in the hands of another might justifiably cause Complainant concern and provide undue advantage to Respondent. As a result, the Panel rejects Respondent's argument in this regard.
Finally, Respondent contends that he will use the disputed domain names only to promote products grown for Complainant. In the Panel's view, that contention is effectively rebutted by the evidence submitted by Complainant (Complaint Annex 8), which shows clearly that Respondent's websites attached to the disputed domain names provide third party links, likely operating on a pay-per-click basis, that mostly have nothing to do with the almonds grown for or sold by Complainant.
Regarding ¶ 4(c)(ii), the Panel finds no reason to suspect that Respondent, L. Wood, has ever been commonly known as any of the disputed domain names. With respect to ¶ 4(c)(i) and (iii), as noted above, the Panel accepts Complainant's contention that the websites attached to the disputed domain names all offer pay-per-click links to third party websites, some of which belong to Complainant's competitors. In line with the consensus of prior UDRP decisions, the Panel determines that such action is neither a bona fide offering of goods and services per ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the names per ¶ 4(c)(iii). See Trump v. Mediaking LLC, D2010-1404 (WIPO Oct. 16, 2010); see also Golden Bear Inter'l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) ("Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant’s business does not represent 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).").
Complainant has disclosed that Respondent has filed an application with the USPTO for the trademark ALMOND RANCHER. However, this does not concern the distinctive part of the disputed domain names which is ‘Blue Diamond’ and, in any event the Panel finds that a mere trademark application is insufficient to grant rights or legitimate interests in the disputed domain names. Moreover, it appears the Respondent made the USPTO application after receiving Complainant’s demand letter regarding the disputed domain names, and was intended as a defensive move to block Complainant's ability to gain transfer of those names through this Policy Complaint and proceeding. See Tipo Oil Corp. v. Tosetti, FA 1620120 (Forum June 16, 2015) ("...panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP."); see also Madonna Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000).
As a result of the conclusions reached above, the Panel rules that Complainant has prevailed with respect to the second element required under the Policy.
Complainant contends that Respondent has engaged in a pattern of registering many domain names that incorporate not only Complainant's trademarks, but also the well-known marks of third parties. If true, this circumstance would be consistent with a finding of bad faith registration and use of the disputed domain names per Policy ¶ 4(b)(ii). Based on the evidence submitted by the Complainant (Annexes 1 and 10), the Panel does find this contention to be true, as that evidence shows Respondent's registration of twenty domain names that incorporate Complainant's marks along with registrations containing other famous marks such as FERRARI, STARBUCKS and AIR JORDAN. Therefore, the Panel finds Policy ¶ 4(b)(ii) to be applicable in this case. See Wikimedia v. Kevo Ouz, D2009-0798 (WIPO Aug. 7, 2009) ("...the record shows that Respondent has engaged in a pattern of registering domain names that bear striking resemblance to famous marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy.); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Forum Dec. 14, 2000) ("...multiple domain name registrations in a short time frame by a single actor indicates an intention to prevent the mark holder from using its mark in a domain name and provides evidence of a pattern of conduct. Policy ¶ 4.b.(ii).").
Complainant contends also that Respondent is intentionally gaining commercially from the likely confusion between the disputed domain names and Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's pay-per-click linked websites. Again, based upon the evidence presented, the Panel is inclined to agree with Complainant's contention in this regard and concludes that those names have been registered and used in bad faith per Policy¶ 4(b)(iv). See Dress Barn, Inc. v. Nhut, FA 1611220 (Forum May 15, 2015); see also Hewlett-Packard Co. v. Venkateshwara., FA 1299746 (Forum Feb. 9, 2010) ("...Respondent receives click-through fees from the hyperlinks relating to Complainant’s competitors as well as the unrelated third-party websites... The Panel finds that Respondent’s receipt of click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv).").
As a result of the conclusions reached above, the Panel rules that Complainant has prevailed with respect to the third element required under the Policy.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluediamondalmondrancher.us>, <mybluediamond.us>, <bluediamondrancher.us>, <mybluediamondalmonds.us>, <bluediamondgower.us>, <bluediamondgowers.us>, <mybluediamondgower.us>, and <mybluediamondgowers.us> domain names be TRANSFERRED from Respondent to Complainant; and that the <bluediamondkings.us> domain name be CANCELLED.
Dennis A. Foster, Chair
Hon. Neil A. Brown QC, Panelist
Dawn Osborne, Panelist
Dated: June 7, 2017
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