Tri-Union Seafoods, LLC dba Chicken of the Sea v. ICS INC.
Claim Number: FA1302001485536
Complainant is Tri-Union Seafoods, LLC dba Chicken of the Sea (“Complainant”), represented by Jocelyn M. Belloni of K&L Gates LLP, California, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwchickenofthesea.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2013; the National Arbitration Forum received payment on February 15, 2013.
On February 19, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <wwwchickenofthesea.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 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@wwwchickenofthesea.com. Also on March 6, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
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 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 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 contends as follows:
Complainant Chicken of the Sea is one of the leading producers of seafood products, including canned tuna.
Complainant owns numerous United States trademark registrations for the CHICKEN OF THE SEA mark and establishes rights in the CHICKEN OF THE SEA mark through such registrations and their continuous use in commerce since July 1912.
Respondent is the registrant of the domain name <wwwchickenofthesea.com> which incorporates Complainant’s well-known CHICKEN OF THE SEA mark. The domain name is substantially identical to and/or confusingly similar to Complainant’s <chickenofthesea.com> domain name in appearance, sound, connation and commercial impression. The CHICKEN OF THE SEA mark is the primary distinctive element of the <wwwchickenofthesea.com> domain name, as well as Complainant’s <chickenofthesea.com> domain name.
Respondent is not affiliated with nor has it been granted any license or permission to use the well-known CHICKEN OF THE SEA mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety and deviates only by the addition of “www” which is clearly intended to direct Internet users who inadvertently fail to type a period after “www” when trying to reach Complainant’s domain name. The domain name embodies Complainant’s name identically, just adding “www” which is descriptive of the World Wide Web and part of most URLs.
As of the date of filing this Complaint, Respondent has not made a legitimate use of, nor has it made demonstrable preparations to legitimately use, the subject domain name in connection with a bona fide offering of goods and services.
Pursuant to Policy ¶ 4(c)(ii), there is no evidence to show that Respondent has ever been known by or operated a business under the “Chicken of the Sea” name or has any trademark rights in that name. Nothing in the WHOIS contact information supports a finding that Respondent is commonly
Respondent is not using <wwwchickenofthesea.com> in conjunction with a bona fide offering of goods or services. Nor is it making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks or service marks, pursuant to Policy ¶ 4(c)(iii). Respondent is using <wwwchickenofthesea.com> to redirect Internet users to a parked website at <egennews.com>.
Respondent’s prior knowledge of Complainant’s mark and bad faith attempt to profit from Complainant’s goodwill is indisputable. Respondent selected, registered, and used the <wwwchickenofthesea.com> domain name in bad faith and for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s CHICKEN OF THE SEA mark.
Registration and use of a domain name incorporating a Complainant’s mark in order to obtain click-through referral or other revenue is another indicator of bad faith.
Respondent’s use of <wwwchickenofthesea.com> is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers may become confused as to the source, sponsorship, affiliation or endorsement of the products and services advertised by the links on Respondent’s website. This is additional evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s use of the disputed domain name disrupts Complainant’s business in an opportunistic attempt to trade on Complainant’s goodwill and is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iii).
Bad faith also exists where a Respondent knowingly registers a domain incorporating another party’s trademarks and/or service marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns multiple United States Patent and Trademark Office (“USPTO”) registered trademarks for its CHICKEN OF THE SEA mark.
Respondent is not affiliated with Complainant and had not been authorized to use the CHICKEN OF THE SEA mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in its CHICKEN OF THE SEA mark.
Respondent uses <wwwchickenofthesea.com> to redirect Internet users to a parked website at <egennews.com>. The website’s landing page contains pay-per-click links to third party websites. The links benefit Respondent when clicked on by a website visitor.
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 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 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for its CHICKEN OF THE SEA mark is conclusive evidence of Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is immaterial that Respondent may reside outside the jurisdiction of the trademark’s registrar. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
In forming the at-issue domain name Respondent prefixes Complainant’s entire trademark with “www” and appends the immaterial top level domain name “.com”. However, after doing so the resulting domain name is nonetheless undeniably reminiscent of Complainant’s mark in sight, sound, and meaning. Therefore, the Panel concludes that Respondent’s <wwwchickenofthesea.com> domain name is confusingly similar to Complainant’s CHICKEN OF THE SEA mark pursuant to Policy ¶ 4(a)(i). See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding that adding the prefix “www” to a domain name without separating it from the mark by a period does not negate a finding of confusing similarity); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “ICS INC.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <wwwchickenofthesee.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the < wwwchickenofthesee.com> domain name to redirect Internet users to a website featuring pay-per-click links to third-parties. The Panel reasonably presumes that Respondent receives pay-per-click fees when a website visitor navigates via one of these links. Respondent’s use of the confusingly similar at-issue domain name in this manner 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered is being used in bad faith. As discussed below, there are multiple Policy ¶4(b) bad faith circumstances present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude pursuant to Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
First as mentioned elsewhere herein, Respondent uses the confusingly similar <wwwchickenofthesea.com> domain name to address a website displaying pay-per-click links to third party websites. Respondent designed the domain name and its website to capitalize on the mistakes of Internet user’s ostensibly looking for Complainant. Internet users wanting to visit Complainant’s website who inadvertently type the <wwwchickenofthesea.com> domain name are unwillingly brought to Respondent’s website and its pay-per-click links. Respondent’s use of the domain name in this manner is clearly intended to unjustly exploit the goodwill associated with Complainant’s trademark and Respondent thereby disrupts Complainant’s business. These circumstances demonstrate bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that the display of competitive links on a disputed domain name diverts the complainant’s customers and thus disrupts the complainant’s business).
Second, upon arriving at Respondent’s website visitors may become confused as to the source, sponsorship, affiliation or endorsement of the entities or products that may be reached via the pay-per-click links displayed thereon. Given the website’s confusingly similar <wwwchickenofthesea.com> domain name, visitors may mistakenly believe that Respondent’s at-issue website is somehow affiliated with Complainant. Therefore, the Panel concludes that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See Wilmington Trust Co. v. Digi Real Estate Found., D2006-0667 (WIPO July 31, 2006) (finding bad faith where “Respondent used the domain name in dispute to intentionally attract internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s websites.)”
Third, given the form of the at-issue domain name which prominently features Complainant’s entire well-known trademark and the domain name’s intended use to generate pay-per-click revenue for Respondent, it is without doubt that Respondent had knowledge of Complainant and its CHICKEN OF THE SEA mark at the time it registered the <wwwchickenofthesea.com> domain name. Registering and using a domain name with knowledge of a complainant’s rights therein indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name).
Finally, Respondent is typosquatting. Although in modern browsers the prefixing of “www.” to a target domain name is not generally necessary for a well formed website address, nevertheless some Internet users will undoubtedly include “www.” when entering their target domain name. In designing the at-issue domain name Respondent removed the period “.” between “www” and “chickenofthesea.com” in an attempt to capitalize on those Internet users who inadvertently omit the period and thereby unwillingly land on Respondent’s <wwwchickenofthesea.com> website. Once at Respondent’s website the accidental visitor is in a position to click on one of the displayed pay-per-click links. These circumstance further suggest Respondent’s bad faith under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” and evidence that the domain name was registered and used in bad faith); see also 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)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwchickenofthesea.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 31, 2013
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