national arbitration forum

DECISION

Whites Cove Corporation d/b/a Maine Lobster Direct v. Horoshiy Inc. a/k/a Horoshiy

Claim Number:  FA0409000335427

PARTIES

Complainant is Whites Cove Corporation d/b/a Maine Lobster Direct (“Complainant”), represented by Alfred C. Frawley of Preti, Flaherty, Beliveau, Pachios and Haley, LLC, One City Center, Portland, ME 04112.  Respondent is Horoshiy Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, #518, Curacao, (null), N/A, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mainlobsterdirect.com>, registered with Nameking.com, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 27, 2004; the National Arbitration Forum received a hard copy of the Complaint September 30, 2004.

On September 27, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <mainlobsterdirect.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. verified that Respondent is bound by the Nameking.com, Inc. registration agreement and thereby has 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 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 28, 2004, 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@mainlobsterdirect.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name that Respondent registered, <mainlobsterdirect.com>, is confusingly similar to Complainant’s MAINE LOBSTER DIRECT mark.

2. Respondent has no rights to or legitimate interests in the <mainlobsterdirect.com> domain name.

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

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

FINDINGS

Complainant, Whites Cove Corporation d/b/a Maine Lobster Direct, is in the business of selling fish and shellfish by means of a global information network.

Complainant established by extrinsic evidence in this proceeding that it holds a trademark registration with the United States Patent and Trademark Office for the MAINE LOBSTER DIRECT mark (Reg. No. 2,877,410 issued August 24, 2004).  Complainant filed the trademark application for its mark on June 11, 2003.  Complainant has used the MAINE LOBSTER DIRECT mark in association with its sale of seafood products since 1996. 

Respondent registered the <mainlobsterdirect.com> domain name on January 19, 2004.  Respondent is using the disputed domain name to redirect Internet users to a website that features a generic search engine and links to websites that offer products and services similar to Complainant’s products and services.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant has established with extrinsic evidence in this proceeding that it has rights in the MAINE LOBSTER DIRECT mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last eight years.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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 has the burden of refuting this assumption).

Furthermore, although Respondent registered the <mainlobsterdirect.com> domain name before Complainant’s trademark registration for the MAINE LOBSTER DIRECT mark was issued, Complainant’s rights in the mark date back to Complainant’s filing date of the application for registration June 11, 2003.  Thus, Complainant had rights in the MAINE DIRECT MARK prior to Respondent’s registration of the disputed domain name.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

The <mainlobsterdirect.com> domain name registered by Respondent is confusingly similar to Complainant’s MAINE LOBSTER DIRECT mark because the domain name simply omits the letter “e” from the state name “Maine.”  The mere omission of a letter from Complainant’s registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

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

Rights to or Legitimate Interests

Complainant alleges in the Complaint that Respondent has no rights or legitimate interests in the <mainlobsterdirect.com> domain name, which contains a commonly misspelled version of Complainant’s MAINE LOBSTER DIRECT mark.  Since Respondent failed to respond to the Complaint, the Panel assumes that Respondent lacks rights and legitimate interests in the <mainlobsterdirect.com> domain name.  Furthermore, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may 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) (holding Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <mainlobsterdirect.com> domain name to redirect Internet users to a website that features hyperlinks to Complainant’s competitors and a generic search engine.  Respondent’s use of a domain name that is confusingly similar to Complainant’s MAINE LOBSTER DIRECT mark to attract Internet users interested in Complainant’s products to a commercial website that offers a generic search engine and links to products and services in competition with Complainant’s products and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Furthermore, nothing in the record suggests Respondent is commonly known by the <mainlobsterdirect.com> domain name, and Complainant did not authorize or license Respondent to use Complainant’s MAINE LOBSTER DIRECT mark.  Therefore, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant uses its MAINE LOBSTER DIRECT mark in association with the sale of fish and shellfish.  The <mainlobsterdirect.com> domain name links Internet users to a website that features links to websites that sell the same products.  Therefore, Respondent is using a domain name confusingly similar to Complainant’s mark to divert business from Complainant to Respondent’s competing website.  The Panel finds that Respondent’s registration of the domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Respondent is using the <mainlobsterdirect.com> domain name, which contains a misspelled version of Complainant’s MAINE LOBSTER DIRECT mark, to attract Internet users interested in Complainant’s mark to Respondent’s commercial website.  Thus, Respondent is using a domain name confusingly similar to Complainant’s well-known mark to divert Internet users to Respondent’s competing website for Respondent’s commercial gain.  Such a practice of diversion for commercial gain through the use of a likelihood of confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding Respondent engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

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 <mainlobsterdirect.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 19, 2004

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