Cherry’s Industrial Equipment Corp v. Cassie Berke
Claim Number: FA2303002037284
Complainant is Cherry’s Industrial Equipment Corp (“Complainant”), represented by Richard M. LaBarge of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Cassie Berke (“Respondent”), represented by Scott B Friedman of Law Offices of Scott B. Friedman, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cherryind.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on March 24, 2023; Forum received payment on March 26, 2023.
On March 27, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <cherryind.com> 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 March 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2023 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@cherryind.com. Also on March 28, 2023, 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 April 14, 2023.
On April 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Cherry’s Industrial Equipment Corp, sells pallet handling equipment.
Complainant has rights in the CHERRY’S mark through trademark registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <cherryind.com> domain name is confusingly similar to the CHERRY’S mark as it merely eliminates the letter “s” and adds the abbreviation “ind” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <cherryind.com> domain name since Complainant has never authorized Respondent to use the CHERRY’S mark. Respondent also does not have a legitimate noncommercial or fair use for the at-issue domain name. Rather, Respondent’s domain name diverts internet traffic to a competitor’s website.
Respondent registered and uses the <cherryind.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract internet users to its competing website for commercial gain.
B. Respondent
Respondent contends as follows:
Respondent is Director of Premier Handling Solutions, Inc. and in the pallet handling equipment business since 2011. Premier Handling Solution, Inc.’s product line overlaps with Complainant’s product line.
Respondent registered the at-issue domain name as an individual.
Respondent does not use Respondent’s CHERRY’S trademark or operate under any company sounding like Respondent mark.
Latches has attached because Complainant only recently seeks to protect its mark despite the domain name being registered almost 10 years earlier.
Respondent has not acted in bad faith as it did not act to jeopardize Complainant’s trademark or cause confusion between Complainant’s mark and the domain name.
Respondent registered the at-issue domain name to support search engine optimization techniques as authorized by Respondent’s management and consultants.
Any redirection of the at-issue domain name was unintentional and the result of implementing SEO tactics, something that Complainant also does and so Complainant does not have clean hands.
The at-issue domain name is not confusingly similar to Complainant’s mark because Respondent operates under a different name that does not sound like CHERRY’S.
Respondent has rights or legitimate interest in the at-issue domain name because it paid all fees for the domain name and there is no proof that Respondent’s use of the domain name is anything but proper.
The domain name is not being used in bad faith because Respondent registered the domain name in good faith and without any intent to cause confusion or profit from Complainant’s trademark.
Complainant has trademark rights in the CHERRY’S mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in CHERRY’S.
Respondent uses the at-issue domains to redirect internet traffic to the website of one of Complainant’s direct 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 and is being used in bad faith.
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of CHERRY’S is sufficient to establish Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The at-issue domain name contain Complainant’s CHERRY’S trademark less its apostrophe and “s” followed by the term ‘ind” and with all followed by the “.com” top level domain name. The differences between <cherryind.com> and Complainant’s trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Respondent fails to directly address the issue of confusingly similar stating only that it does not operate under a company name sounding like CHERRY’S. Therefore, the Panel finds that Respondent’s <cherryind.com> domain name is confusingly similar to Complainant’s CHERRY’S mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). see also, Lockheed Martin Corporation v. toyosei 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.”).
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 evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Cassie Berke” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <cherryind.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <cherryind.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Respondent uses the confusingly similar at-issue domain name to redirect internet users to the website of one of Complainant’s direct competitors. Respondent’s use of the domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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 also, Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Respondent seems to counter Complainant’s claim that it lacks rights and legitimate interests in the domain name by asserting that it paid for the at-issue domain name, is the domain name’s rightful owner, and registered a domain name that Complainant failed to register. However, such assertion is unavailing and is part the fact pattern in virtually every UDRP proceeding.
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First as mentioned above regarding rights and interests, Respondent uses the at-issue domain name to redirect internet users to one of Complainant’s direct competitors. Respondent thereby capitalizes on the confusion it created between Complainant’s trademark and the <cherryind.com> domain name. Respondent’s use of the at-issue domain name in this manner shows Respondent’s bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also, OneWest Bank N.A. v. Matthew Foglia, FA 1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Respondent justifies its use of the domain name by claiming that it was not intentionally registered by Respondent while also acknowledging that it the domain name was registered as part of deploying search engine optimization tactics. Respondent is nevertheless responsible for implementing the recommendations of, and/or the actions of, its employees and contractors.
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark or related mark e.g. a domain name used by the mark holder, and then incorporates the misspelled string into a domain name. Here, in forming the at-issue domain name Respondent removes the apostrophe and letter “s” from Complainant’s trademark then adds the term “ind” and a top-level. Respondent’s domain name closely resembles Complainant’s genuine domain name <cherrysind.com> which Complainant uses to address Complainant’s official website. Respondent desires that upon attempting to enter Complainant’s web address into a browser internet users will inadvertently enter Respondent’s domain name; or when reading the at-issue domain name in a search result or otherwise, will overlook the domain name’s misspelling of Complainant’s genuine domain name. In either case, internet traffic intended for Complainant will be waylaid to a competing website. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent registered <cherryind.com> while knowing that Complainant had trademark rights in the CHERRY’S mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from the close physical proximity of Complainant to the Respondent’s business to which the at-issue domain name is directed; from Respondent’s typosquatting; and because Respondent appears to admit having long term knowledge of Complainant in its Response. Respondent’s prior knowledge of Complainant's trademark further shows that Respondent registered and used <cherryind.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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"); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
Respondent claims that the doctrine of laches bars Complaint from prevailing since Complainant could have brought a UDRP action when Respondent first registered the at-issue domain name but instead waited approximately 10 years before proceeding with the instant case. However, the equitable doctrine of laches does not lend itself to this UDRP administrative proceeding. Although not all panels agree, many panels have held that laches is not a UDRP defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also, Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Even if the Panel were to apply the doctrine of laches to the instant dispute, the doctrine would fail. The doctrine of laches, inter alia, requires that its proponent show that it has been prejudiced by the adverse party’s delay. Respondent offers no indication of any specific prejudice to Respondent’s ability to present evidence and defend against the claims made by Complainant caused by any delay in filing its Complainant. In fact any delay may have worked to Complainant’s disadvantage. See AVN Media Network, Inc. v. Hossam Shaltout, D2007-1011 (WIPO Sept. 13, 2007) (“The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.”). Additionally, the Panel notes that Respondent was able to secure the benefits from having the at-issue domain name redirect internet traffic from the at-issue domain name to its business interest for many years. Therefore, even if the Panel were to consider Respondent’s laches defense it would be ineffective under the circumstances at bar.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cherryind.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 21, 2023
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