Complainant is SusieCakes, LLC of Los Angeles, California, United States of America, represented by Foster Pepper PLLC, United States of America.
Respondent is Top Business Names of West Bay, Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On December 23, 2010, R Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 25, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on February 3, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant was registered as a California Limited Liability Company under the name SusieCakes LLC in May 2005. Complainant’s business is the bakery business. Its first location was in the Brentwood section of Los Angeles where Complainant commenced to use the trademark SUSIECAKES in association with bakery products on July 15, 2006. Complainant currently has six locations in California. Complainant is the owner of three United States (“US”) Trademark Registrations for or including SUSIECAKES. Complainant filed an application for the trademark SUSIECAKES and Design in the US on March 12, 2006, in relation to bakery products. The application proceeded to registration as US Trademark Registration No. 3745481 on February 2, 2010. Complainant is also the owner of US Trademark Registration No.3701568 for the trademark SUSIECAKES, registered on October 27, 2009, in relation to bakery products based on use since July 15, 2006. Complainant is also the registrant of US Trademark Registration No. 3701572 for the trademark SUSIECAKES registered October 27, 2009 in relation to retail bakery shops, based on use since at least as early as July 15, 2006.
Respondent registered the disputed domain name on November 21, 2006. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant submits that it is the registered owner of three United States trademark registrations for or including SUSIECAKES, reviewed in section 4 immediately above. Complainant states that previous UDRP panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, NAF Claim No. 104177 (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, NAF Claim No. 652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Complainant further submits that the disputed domain name is identical to Complainant’s trademark SUSIECAKES. The only difference between the disputed domain name and Complainant’s trademarks is the addition of the generic top level domain “.com.” It has been established that the mere addition of a gTLD is not enough to distinguish a domain name from an established trademark. A.2. No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that there exists no legitimate reason for Respondent to use Complainant’s business name or trademark. Respondent is not commonly known by the disputed domain name . Complainant could find no indication on the “www.” website, located at the disputed domain name, or elsewhere to indicate that Respondent is commonly known by the disputed domain name or of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The WhoIs information identifies Respondent as “Top Business Names” and this name is in no way similar to the disputed domain name. Complainant has not authorized or licensed Respondent to use or register the disputed domain name.
Complainant states that from WhoIs records, the disputed domain name was first registered by Respondent on November 21, 2006, eight months after Complainant filed to register its trademark SUSIECAKES. The disputed domain name resolves to a website that features links to third-party websites and advertisements some of which offer products and services in competition with Complainant’s bakery business. The website lists Complainant’s own business “SusieCakes Brentwood” but the link associated with “SusieCakes Brentwood” links to competitor sites. Further, this link is not associated with the legitimate SUSIECAKES website but provides links to a “Shopzilla” website, listing competitors of Complainant.
Complainant submits that Respondent most likely receives click-through fees from the links featured on the website associated with the disputed domain name. Past panels have found that such use is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of the domain name. (See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., NAF Claim No. 621292). Rather, the use of the disputed domain name by Respondent misleadingly diverts consumers from Complainant’s legitimate website. A.3. Registration in Bad Faith
Complainant states that from WhoIs records, the disputed domain name was first registered by Respondent on November 21, 2006, after Complainant filed to register its trademark SUSIECAKES on March 12, 2006 and after Complainant began to use its trade mark in commerce on July 15, 2006. The fact that Respondent uses the disputed domain name in connection with a site featuring bakery goods/services links supports an inference that Respondent was aware of Complainant’s trademark SUSICAKES prior to registration of the disputed domain name. A.4. Use in Bad Faith
Complainant states that the disputed domain name resolves to a website that features links to third-party websites and advertisements, some of which offer products and services in competition with Complainant’s bakery business. Internet users searching for SusieCakes LLC may find Respondent’s website instead because of Respondent’s use of a confusingly similar domain name, which incorporates Complainant’s trademark in its entirety. Respondent receives click-through fees from hyperlinks associated with the website “www.“. Respondent’s use of the disputed domain name is disruptive to Complainant’s business because Internet users searching for Complainant’s products and services may be redirected to the websites of competitors. Such disruption supports a finding of bad faith registration and use.
Complainant further submits that Internet users may become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website and featured links. This is particularly true given Complainant’s business is listed on the website associated with the disputed domain name. The link associated with “SusieCakes Brentwood” on the “www.“ website is not associated with the legitimate SUSIECAKES business or website but instead links to a Shopzilla website, which displays links to bakeries and baked goods of Complainant’s competitors. It appears that Respondent attempts to profit from the confusion it creates, through the receipt of click-through fees. These facts support a finding of bad faith registration and use. See University of Houston System. v. Salvia Corp., NAF Claim No. 637920 and Zee TV USA, Inc. v. Siddiqi, NAF Claim No. 721969 .
Complainant further submits that as the trademark SUSIECAKES is a highly distinctive mark for such goods, and not at all suggestive of general bakery goods or services, supports the contention that the disputed domain name may have been acquired primarily for the purpose of selling it to the owner of the trademark or a competitor for valuable consideration in excess of Respondent’s out-of-pocket costs, associated with the acquisition of the disputed domain name.
Complainant states that it found no indication on the Internet that there is a business registered in the Cayman Islands called “Top Business Names.” A search of the Business Directory of the Cayman Islands Chamber of Commerce does not indicate there is a business called “Top Business Names” registered in the Cayman Islands. This indicates that false information for the domain name owner is being used and adds to the contention that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first establish rights in a trademark and secondly, that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of three registered trademarks for and including SUSIECAKES registered on the Principal Register in the United States prior to the commencement of this case in relation to the goods and services, described in section 4 above. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 1.4 states that the consensus view of panelists is that:
“[R]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identical or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trademark or service mark acquired rights. However it can be difficult to show that the domain name was registered with a future trademark in mind.”
Complainant’s registered trademarks were in use and Trademark Application No. SN 78 - 835,090 for the trademark SUSIECAKES and Design, was filed in the United States Patent and Trademark Office (“USPTO”) on March 12, 2006, which was prior to the date of registration of the disputed domain name on November 21, 2006. Further, as will be shown below, the Panel finds that Respondent has been a respondent in prior UDRP cases, who on a balance of probabilities was likely aware of Complainant’s trademark use or application for the trademark SUSIECAKES prior to the registration of the disputed domain name.
The disputed domain name incorporates the entirety of Complainant’s trademark registrations for or including SUSIECAKES. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g., PepsiCo. Inc. v. PEPSI SRl ,WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding , , and other domains confusingly similar to complainant’s PEPSI mark).
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks for or including SUSIECAKES. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto.
Complainant found no indication on the web that there is a business registered in the Cayman Islands called “Top Business Names”. Complainant also asserts that a search of the Business Directory of the Cayman Islands Chamber of Commerce does not indicate there is a business called “Top Business Names” registered in the Cayman Islands. This indicates that false information for the domain name owner is being used. A search for the phrase “Top Business Names” conducted by the Panel during it’s conflict search discloses that Respondent has in previous UDRP proceedings been ordered to transfer the domain names in the following reported cases : The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business, WIPO Case No. D2010-0319; Investment AB Kinnevik v. Top Business Names, WIPO Case No. D2010-0549; Constellation Brands Inc. and its wholly owned subsidiary Robert Mondavi Winery v. Top Business Names, NAF Claim No. 1270471; Houston McLane Company, Inc. dba The Houston Astros Baseball Club v. Top Business Names c/o Domain Administrator, NAF Claim No. 1296706 ; United States Automobile Association v. Top Business Names / Domain Administrator, NAF Claim No. 1338416; and U.S. Smokless Tobacco Manufacturing Company LLC v. Top Business Names / Domain Administrator, NAF Claim No. 1347836.
The disputed domain name resolves to a website that offers links to Complainant’s bakery products as well as bakery products of Complainant’s competitors. Respondent’s use of a confusingly similar domain name to divert traffic to its website is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use of the disputed domain name. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NFA Claim No. 1262486 (holding no rights or legitimate interests where domain name resolves to a parked website and respondent presumably generates click-through fees from such use).
On the basis of the content of the webpages associated with the disputed domain name, the WhoIs search results for the disputed domain name and a review of the data base maintained in USPTO for the word “susiecakes”, the Panel finds that Respondent is not commonly known by the “susiecakes” name and owns no relevant trademark applications or registrations for them. See, Braun Corp. v. Loney, NAF Claim No. 699652 (concluding that the respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also, Tercent Inc. v. Lee Yi, NAF Claim No. 139720 (finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name).
It is often difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Here, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy. In absence of any such response, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C.1. Registered in Bad Faith
Complainant has established from WhoIs records that the disputed domain name was first registered by Respondent on November 21, 2006, which was after Complainant filed to register its trademark SUSIECAKES on March 12, 2006, and after Complainant began to use its trade mark in commerce on July 15, 2006. A review of reported disputed domain name cases has revealed that Respondent is a professional registrant who has been ordered to transfer disputed domain names in the following cases: The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business, WIPO Case No. D2010-0319; Investment AB Kinnevik v. Top Business Names, WIPO Case No. D2010-0549; Constellation Brands Inc. and its wholly owned subsidiary Robert Mondavi Winery v. Top Business Names, NAF Claim No. 1270471; Houston McLane Company, Inc. dba The Houston Astros Baseball Club v. Top Business Names c/o Domain Administrator, NAF Claim No. 1296706 ; United States Automobile Association v. Top Business Names / Domain Administrator, NAF Claim No. 1338416; and U.S. Smokless Tobacco Manufacturing Company LLC v. Top Business Names / Domain Administrator, NAF Claim No. 1347836.
The fact that Respondent uses the disputed domain name in connection with a website with active links to bakery goods/services supports also an inference that Respondent was aware of Complainant’s trademark SUSICAKES prior to registration of the disputed domain name.
The Panel finds on a balance of probabilities that the Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b)(ii) of the Policy provides that registering a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name is evidence of registration and use in bad faith provided the respondent has engaged in a pattern of such conduct.
Respondent has registered numerous other domain names incorporating the trademarks of third parties, including, but not limited to, , , , , , and . These registrations show Respondent has engaged in a bad faith pattern of conduct, satisfying paragraph 4(b)(ii) of the policy. See Inter-IKEA Systems B.V. v. Technology Education Center,WIPO Case No. D2000-0522 (finding Respondent’s registrations of domain names containing trade marks owned by third parties was prima facie evidence of engaging in a pattern of conduct to prevent trade mark owners from reflecting their marks in a corresponding domain name); and Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd.,WIPO Case No. D2006-0510 (registration by respondent of domain names incorporating trademarks of other parties constitutes an engagement in a pattern of such conduct).
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage, associated with the disputed domain name, include links to entities providing products and services related to the kind of products and services offered by Complainant, without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s registered trademarks for or including SUSIECAKES as the distinctive element enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers from the record that Respondent is receiving click through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where resolves to a commercial search engine website generating click-through advertising fees); and Brink’s Network, Inc. v. Jenny Ho, ,WIPO Case No. D2009-0530 (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: February 16, 2011
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