Michael's Bakery Products, LLC v. SD Onsite
Claim Number: FA1305001499075
Complainant is Michael's Bakery Products, LLC (“Complainant”), represented by Nicholas R. Merker of ICE MILLER LLP, Indiana, USA. Respondent is SD Onsite (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <michaelscookies.com>, <michaelscookieswholesale.com>, and <bonzers.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2013; the National Arbitration Forum received payment on May 9, 2013.
On May 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <michaelscookies.com>, <michaelscookieswholesale.com>, and <bonzers.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@michaelscookies.com, postmaster@michaelscookieswholesale.com, postmaster@bonzers.com. Also on May 15, 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 June 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the MICHAEL'S COOKIES trademark, which Complainant uses in connection with its cookie dough, cookies, and frozen, ready-to-bake cookie dough products. Complainant owns U.S. Trademark Registration No. 4,066,760 for the MICHAEL'S COOKIES mark, as well as U.S. Trademark Registration No. 3,116,699 for the MICHAEL'S COOKIES SERIOUSLY DELICIOUS (and Design) mark. In addition, Complainant is the owner of the BONZERS trademark, which Complainant uses in connection with its unbaked cookie dough products. Complainant owns U.S. Trademark Registration No. 1,601,203 for the BONZERS mark and U.S. Trademark Registration No. 3,525,130 for the BONZERS SERIOUSLY YUMMY! (and Design) mark.
Complainant has been using the MICHAEL'S COOKIES mark in commerce since at least 1989. Complainant has expended significant sums in advertising and promoting its services by reference to the MICHAEL'S COOKIES mark. As the result of Complainant's promotional efforts, a significant portion of consumers recognize the MICHAEL'S COOKIES mark and associate the MICHAEL'S COOKIES mark with Complainant and the products that Complainant offers in connection with the MICHAEL'S COOKIES mark.
Complainant has been using the BONZERS mark in commerce since at least 1989. Complainant has expended significant sums in advertising and promoting its services by reference to the BONZERS mark. As the result of Complainant's promotional efforts, a significant portion of consumers recognize the BONZERS mark and associate the BONZERS mark with Complainant and the products that Complainant offers in connection with the BONZERS mark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. Similarity Between the Marks and the Domain Names:
The MICHAELSCOOKIES.COM and MICHAELSCOOKIESWHOLESALE.COM domain names (the "Michael's Cookies Domains") contain the entirety of the unique MICHAEL'S COOKIES mark with the addition of a generic top-level domain, i.e. ".net", ".org" and ".com" and, in one instance, the addition of the generic term "WHOLESALE". The BONZERS.COM domain name (the "Bonzers Domain") contains the entirety of the unique BONZERS mark with the addition of a generic top-level domain, i.e. ".net", ".org" and ".com". Generally, a domain name is confusingly similar to a mark "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name." Nichole Kidman v. John Zuccarini, D2000-1415 (WIPO Jan. 2, 2001) (where the panel found that the domain name NICHOLEKIDMANNUDE.COM was confusingly similar to film star Nichole Kidman's common law mark in her name). Accordingly, when a domain name registrant merely adds a generic or descriptive term to a trademark, the result is almost always confusing similarity. See Societe Air France v. Hosters Direct, D2004-0170 (WIPO Apr. 8, 2004) (AIRFRANCEDIRECT.COM confusingly similar to AIR FRANCE mark); Lyons Partnership, L.P. v. NetSphere, Inc., D2004-0118 (WIPO May 27, 2004) (BARNEYONLINE.COM confusingly similar to BARNEY mark); Segway LLC v. Hoffman, D2005-0023 (WIPO Feb. 25, 2005) (SEGWAYACCESSORIES.COM confusingly similar to SEGWAY mark). Also, the affixation of a generic top-level domain is inconsequential in regards to a Policy ¶4(a)(i) analysis. 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.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
Similar to the cases cited above, the Michael's Cookies Domains contain the totality of the MICHAEL'S COOKIES mark and the Bonzers Domain contains the totality of the BONZERS mark, with, in each case, at most, generic additions. Accordingly, Complainant respectfully submits that the Michael's Cookies Domains are confusingly similar to the MICHAEL'S COOKIES mark and the Bonzers Domains are confusingly similar to the BONZERS mark.
b. Respondent's Lack of Rights or Legitimate Interests in the Domain Names:
The Michael's Cookies Domains and the Bonzers Domain collectively will be referred to herein as the Domain Names. Respondent has no rights or legitimate interests with respect to the Domain Names. Respondent is not commonly known by the Domain Names and has no intellectual property rights in the Domain Names. As discussed above, Complainant owns trademark registrations for the MICHAEL'S COOKIES mark and the BONZERS mark and has established significant rights in each mark. Thus, Complainant is the entity that has been commonly associated with the words in the Domain Names, not Respondent. Further, Respondent is not using the MICHAEL'S COOKIES or BONZERS mark with the permission of or a license from Complainant, nor is Respondent in any way affiliated with Complainant as of the date of this filing. Additionally, the Respondent has not used, or demonstrably made preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Lastly, Respondent is not "making a legitimate noncommercial or fair use of the domain name[s]" within the meaning of the ICANN Policy.
Between 1999 and 2000, Complainant registered the bonzers.com domain and the michaelscookies.com domain claiming itself as Registrant in each case. Around 2005, Complainant engaged with third party IT consulting services through Deltyme Corporation to manage its domain names. Although still owned by Complainant, the michaelscookies.com domain and the bonzers.com domain were transferred to Deltyme Corporation for administrative management of these Internet properties. In 2006, at the direction of Complainant, Deltyme Corporation registered the michaelscookieswholesale.com domain.
In 2011, Complainant replaced Deltyme Corporation for its IT consulting services with Respondent. Respondent billed Complainant for administrative duties made in regards to the Domain Names on behalf of Complainant throughout the engagement between the parties, including, but not limited to, renewing the Domain Names and moving the Domain Names to the GoDaddy registrar.
In February 2013, the relationship between Complainant and Respondent was severed unexpectedly. Respondent severed all contact with Complainant and absconded, resulting in most web services associated with the Domain Names to become unavailable (i.e. Bonzers Domain email; Michael's Cookies Domains HTTP services). Complainant made numerous attempts to contact Respondent to transfer the Domain Names to Complainant's new IT provider to no avail. Respondent is no longer providing any management services for the Domain Names on behalf of Complainant and, therefore, has no legitimate interest in the Domain Names.
c. Respondent's Bad Faith:
The Domain Names were registered by Complainant or at the direction of Complainant. Complainant permitted the transfer of the Domain Names to Respondent to provide management services on behalf of Complainant. After the relationship between Complainant and Respondent was severed, Respondent continues to hold the Domain Names hostage in bad faith. Further, Respondent has not responded to attempts by Complainant to communicate about transfer of the Domain Names to Complainant's new IT services provider while critical services used by Complainant on a daily basis are not functioning and cannot be repaired until Complainant gains control of the Domain Names (i.e. Bonzers.com email). Passively holding a domain may constitute bad faith. See, for example, UBS AG v. Rudolf Gautschi D2005-0993 (WIPO November 8, 2005) (“As there is no content shown on the websites associated to the Domain Names, the Panel concludes that Respondent’s sole intention was to passively hold the Domain Names and thereby prevent the Complainant from reflecting its mark in a corresponding domain under the generic top level domains “.net” and “.org”. This clearly indicates bad faith.”) (“The Respondent is not making a legitimate non-commercial or fair use of the Domain Names. The websites associated to the Domain Names show no content. The Respondent has not provided the Panel with any information that would suggest his use of the Domain Names, or demonstrable preparations to use, in connection with a bona fide offering of goods or services, or a non-commercial or fair use of the Domain Names.”)
In view of the foregoing facts, Complainant respectfully submits that the Domain Names are being held by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 NOT been registered 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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the MICHAEL’S COOKIES and BONZERS trademarks under Policy ¶4(a)(i) regarding to its cookie and cookie dough products. Complainant has used the MICHAEL’S COOKIES and BONZERS trademarks in commerce since at least 1989. Complainant registered its trademarks with the United States Patent & Trademark Office (“USPTO”), including:
BONZERS (Reg. No. 1,601,203 registered June 12, 1990);BONZERS SERIOUSLY YUMMY! (Reg. No. 3,525,130 registered October 28, 2008);
MICHAEL’S COOKIES (Reg. No. 4,066,760 filed April 22, 2011, registered December 6, 2011); and
MICHAEL’S COOKIES SERIOUSLY DELICIOUS & design (Reg. No 3,116,699 registered July 18, 2006).
Evidence of a registration with the USPTO is normally sufficient to indicate a complainant has rights in a given mark under Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Based upon the uncontroverted evidence in this case, Complainant has rights in the BONZERS, BONZERS SERIOUSLY YUMMY!, MICHAEL’S COOKIES, and MICHAEL’S COOKIES SERIOUSLY DELICIOUS trademarks under Policy ¶4(a)(i) dating back to the date on which Complainant filed its trademark application for each respective mark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant claims the disputed domain names are confusingly similar to Complainant’s registered BONZERS and MICHAEL’S COOKIES trademarks. The <michaelscookies.com> and <michaelscookieswholesale.com> domain names incorporate Complainant’s MICHAEL’S COOKIES trademark in its entirety. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s trademark, which must be ignored for the purposes of a Policy ¶4(b)(i) analysis. The <michaelscookieswholesale.com> domain name adds the generic term “wholesale” to Complainant’s registered trademark. Respondent also eliminates the space between the words in Complainant’s MICHAEL’S COOKIES trademark and also eliminates the apostrophe in the MICHAEL’S portion of the trademark (neither character is permissible in a valid domain name). Eliminating spaces and apostrophes and adding generic words and gTLDs are (and, by definition, must be) insufficient to differentiate a disputed domain name from a mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). The <michaelscookies.com> and <michaelscookieswholesale.com> domain names are confusingly similar to Complainant’s MICHAEL’S COOKIES trademark under Policy ¶4(a)(i).
Complainant claims the <bonzers.com> domain name features the entirety of Complainant’s BONZERS mark with the addition of the gTLD “.com.” Respondent’s <bonzers.com> domain name is identical to Complainant’s BONZERS trademark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the 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 claims Respondent has no rights or legitimate interests in the <michaelscookies.com>, <michaelscookieswholesale.com>, and <bonzers.com> domain names because it is not commonly known by the domain names. Complainant has not currently allowed or licensed Respondent to use any of the <michaelscookies.com>, <michaelscookieswholesale.com>, or <bonzers.com> domain names. Complainant is not affiliated with Respondent as of the date of the Complaint. Based upon the WHOIS information (which was provided by the registrar’s verification and not by Complainant), Respondent is not commonly known by the disputed domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Respondent had possession of the disputed domain names in 2011 with Complainant’s permission, when Complainant replaced Deltyme Corporation with Respondent as its IT consultant. Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii), despite the fact that Respondent was given control of the domains with Complainant’s permission.
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policies ¶¶4(c)(i) and (iii), respectively. This is not entirely clear from the evidence presented. <michaelscookies.com> does not resolve to an operating web site. That alone is not dispositive. <michaelscookieswholesale.com>, and <bonzers.com> resolve to operating web sites (and apparently different operating web sites). For the sake of argument, the Panel will conclude Respondent is not actually making any bona fide services available on the disputed domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
There is no doubt Complainant transferred these domain names to Respondent. Regrettably for Complainant, Policy ¶4(a)(iii) requires the disputed domain names be registered and used in bad faith. While Respondent is certainly using the domain names in bad faith, it didn’t register them in bad faith. Policy ¶4(b)(iii) requires both, Parker Hannifin Corporation v. East Bay Website Company, AF-0587 (eResolution Dec. 22, 2000) and The Mark Travel Corporation v. ATHS d/b/a Snug Harbor Travel, Claim Number: FA0304000154644 (May 29, 2003).
Other panels have held cases such as this are outside the UDRP. In Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007), the panel stated:
When the respondent registers a domain name on behalf of the complainant and then refuses to relinquish control over the domain name registration, the cause of action is for breach of contract or fiduciary duty and is thus outside the scope of the UDRP Policy.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trademarks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
In Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) the panel addressed disputes arising out of a previous business relationship between a complainant and a respondent finding:
Disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy.
While there may be good policy reasons not to allow business disputes such as this one to proceed under the UDRP, it is not necessary to reach that conclusion. Since the domain name was registered with Complainant’s permission, Policy ¶4(b)(iii)’s requirement of bad faith registration can never be proven under such cases. This Panel concludes these cases are within the scope of the UDRP, but they can never be successfully prosecuted under the UDRP by their very definition.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <michaelscookies.com>, <michaelscookieswholesale.com>, and <bonzers.com> domain names REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 21, 2013
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