DECISION

Fishery Products International, Ltd. v. HT Domains

Claim Number:  FA0310000204146

PARTIES

Complainant is Fishery Products International, Ltd. (“Complainant”), represented by Gary W. Smith, of Posternak Blankstein & Lund LLP, 100 Charles River Plaza, Boston, MA 02114.  Respondent is HT Domains  (“Respondent”), represented by Tom Harper, 1278 Glenneyre, Laguna Beach, CA 92651.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fisheryproducts.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 23, 2003; the Forum received a hard copy of the Complaint on October 23, 2003.

On October 23, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <fisheryproducts.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. 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 October 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 2003 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@fisheryproducts.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 21, 2003 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.         

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <fisheryproducts.com> domain name is confusingly similar to Complainant’s FISHERY PRODUCTS INTERNATIONAL mark.

2. Respondent does not have any rights or legitimate interests in the <fisheryproducts.com> domain name.

3. Respondent registered and used the <fisheryproducts.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Fishery Products, International is the owner of the registered trademark FISHERY PRODUCTS INTERNATIONAL, registered with the United States Patent and Trademark Office (“USPTO”) on May 4, 1999 (Reg. No. 2242331).  The USPTO registration notes the following disclaimer: “No claim is made on the exclusive right to use ‘Products’ apart from the mark as shown.”

Respondent, HT Domains, registered the <fisheryproducts.com> domain name in July, 1999.  Respondent has not used the domain name for any purpose.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the FISHERY PRODUCTS INTERNATIONAL mark through registration with the USPTO and subsequent continuous use of the mark in commerce.  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 and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing).

The disputed domain name, <fisheryproducts.com>, is confusingly similar to Complainant’s FISHERY PRODUCTS INTERNATIONAL mark.  Even though Respondent omitted “International” to Complainant’s mark, this difference is insufficient to differentiate Respondent’s <fisheryproducts.com> domain name from Complainant’s FISHERY PRODUCTS INTERNATIONAL mark.  Therefore, Complainant has established that the <fisheryproducts.com> domain name is confusingly similar to Complainant’s FISHERY PRODUCTS INTERNATIONAL mark.  See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, <hammondsuddards.net>, is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor in connection with a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  Respondent has held the registration since 1999, but had not used the domain name to host a website.  Therefore, Respondent has not demonstrated any legitimate interest in the disputed domain name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent is not commonly known as FISHERY PRODUCTS INTERNATIONAL or any derivation of Complainant’s mark.  Given the WHOIS contact information for the disputed domain, one can infer that Respondent is not commonly known by the name.  In addition, Complainant has not licensed or authorized Respondent to use the <fisheryproducts.com> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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")

Registration and Use in Bad Faith

Respondent had constructive knowledge of Complainant’s mark before registering the disputed domain name because it was registered on the Principal Register of the USPTO.  Knowledge of Complainant’s mark demonstrates that Respondent registered the domain name in bad faith.  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (“a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Respondent has registered the disputed domain name and held it without use since 1999.  While not actively using the domain name to host a website, Respondent’s passive holding constitutes use in bad faith pursuant to Policy ¶ 4(a)(iii).  Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fisheryproducts.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  December 3, 2003

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