Nueske's Meat Products, Inc. v. Speedy Web
Claim Number: FA0602000638000
Complainant is Nueske's Meat Products, Inc. (“Complainant”), represented by Daniel R. Johnson, of Ryan Kromholz & Manion, S.C., 3360 Gateway Road, Brookfield, WI 53045. Respondent is Speedy Web (“Respondent”), Eight Thirty Eight Camp St., 4th Floor, New Orleans, LA 70130.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <nueskemeats.com> and <nueskewholesale.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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 this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2006.
On Febraury 2, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <nueskemeats.com> and <nueskewholesale.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 2, 2006, this case was
temporarily stayed by the National Arbitration Forum because Respondent was
located in an area affected by Hurricane Katrina. The National Arbitration Forum notified the parties of the
suspended status of the case via email on February 6, 2006. On April 3, 2006, the National Arbitration
Forum lifted the stay and allowed the case to proceed.
On April 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 1, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nueskemeats.com and postmaster@nueskewholesale.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, pursuant to Complainant's request to have the dispute decided 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has been in the business of selling meats and related products for fifteen years, and has registered the NUESKE’S trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,224,428 issued February 16, 1999).
Complainant registered the <nueskemeats.com>
domain name on November 1, 2001.
However, Complainant unsuccessfully attempted to renew the domain name
in November 2005 and lost the registration in December 2005.
Respondent registered the <nueskemeats.com> and <nueskewholesale.com> domain names in December 2005.
Internet users who access these domain names are directed to generic search-engine websites displaying results for keyword searches such as “meat” and “poultry”, and featuring links to websites offering products in competition with Complainant.
Respondent’s <nueskemeats.com> and <nueskewholesale.com> domain names are confusingly similar to Complainant’s NUESKE’S mark.
Respondent does not have any rights or legitimate interests in the <nueskemeats.com> and <nueskewholesale.com> domain names.
Respondent registered and uses the <nueskemeats.com> and <nueskewholesale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are 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."
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.”
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.
Complainant has established rights in the NUESKE’S mark by virtue of its registration of the mark with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002): “Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.” See also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002): "Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."
Respondent’s <nueskemeats.com> and <nueskewholesale.com> domain names are confusingly similar to Complainant’s NUESKE’S mark. Both domain names incorporate Complainant’s mark in its entirety but without the apostrophe and the letter “s.” The omission of these characters from Complainant’s mark does not adequately distinguish Respondent’s domain names from the mark. See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the <victoriasecret.com> domain name to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET). In addition, Respondent’s domain names add the generic terms “meats” and “wholesale” to Complainant’s mark. The term “meats” bears a direct relationship to Complainant’s business, and in fact Complainant originally registered the domain name <nueskemeats.com>. The addition to Complainant’s mark of such generic terms does not negate the confusing similarity of the domain names to the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar the WESTFIELD mark because the mark was the dominant element).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have such rights or interests. Complainant has presented a prima facie case, and Respondent has failed to answer the Complaint. The Panel will nonetheless consider whether an evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts
to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”)
It is undisputed that Respondent’s <nueskemeats.com>
and <nueskewholesale.com> domain names are confusingly similar to
Complainant’s NUESKE’S mark. Likewise there is no denial from Respondent that
Internet users who access the disputed domain names are redirected to generic
search-engine websites featuring links to other websites that offer products in
competition with those of Complainant.
The Panel presumes Respondent receives payment in exchange for diverting
Internet users to these other websites.
Therefore, Respondent’s use of the disputed domain name is not in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a
respondent was not using contested domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website offering
services competing with those offered by a complainant under its marks); see also Gardens Alive, Inc. v.
D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that a
respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by a
complainant and thus was not using the name in connection with a bona fide
offering of goods or services nor was it a legitimate noncommercial or fair
use).
Moreover, there is no evidence of record in this proceeding
to indicate that Respondent is commonly known by the <nueskemeats.com>
and <nueskewholesale.com> domain names, nor does anything in the
WHOIS information for these domain names indicate that Respondent is commonly
known by these names. See Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”
See also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
Thus the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <nueskemeats.com> and <nueskewholesale.com>
domain names, which are confusingly similar to Complainant’s NUESKE’S mark, to
present Internet users with links to products offered by Complainant’s
competitors. The Panel infers that
Respondent receives click through fees in return for directing Internet users
to such websites. This use of the
disputed domain names constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where a respondent registered and used
a domain name confusingly similar to a complainant’s mark to attract users to a
website sponsored by the respondent); see
also Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”
Finally, it appears that Respondent registered the contested
domain names with either actual or constructive knowledge of Complainant’s
rights in the NUESKE’S mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of confusingly similar domain
names despite such actual or constructive knowledge evidences bad faith
registration and use of the domain names pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <nueskemeats.com> and <nueskewholesale.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 19, 2006
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