The Complainant is Innovative Beverage Concepts, Inc. of Irvine, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton LLP, United States of America.
The Respondent is Domini Mariano of Magnolia, Texas, United States of America. 2. The Domain Name And Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 the Respondent of the Complaint, and the proceedings commenced on December 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on January 22, 2013. 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
The Complainant develops and offers for sale a variety of beverages including flavored drinks and powdered drink mixes containing tea, which are sold under the brand TEAOLOGY, both online at the Complainant’s ‘’www.’’ website and through various retailers. The Complainant has two federal trademark registrations for TEAOLOGY, the earliest of which was issued by the United States Patent and Trademark Office (USPTO) on November 12, 2002.
The disputed domain name was registered by the Respondent on February 27, 2010. At present, the disputed domain name resolves to a webpage with the following content: “tealogy (tee-lluh-jee) – the art and science of making tea”. Screenshots submitted as annexes to the Complaint reflect the Respondent’s prior use of the disputed domain name, as recently as November 21, 2012, with a website featuring an online “store” offering various tea products for sale. 5. Parties’ Contentions A. Complainant
The Complainant asserts that is has rights in the TEAOLOGY mark arising from its registration and extensive use with flavored and powdered drink mixes. The Complainant submits that through extensive marketing and promotion the TEAOLOGY mark has become well-known in the United States and other countries. The Complainant calls attention to various awards garnered by the TEAOLOGY mark, and asserts that it’s TEAOLOGY branded tea products have been prominently featured over the years in various publications dedicated to coffee, tea and other gourmet items.
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s TEAOLOGY mark. According to the Complainant, the omission of the letter “o” in the suffix “ology” is not sufficient to dispel such confusing similarity, as the suffixes “ology” and “logy” are both commonly used to denote a field of study or branch of knowledge. Thus, the Complainant submits that the disputed domain name is confusingly similar to its TEAOLOGY mark in appearance, sound, and meaning.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent is not authorized to use the TEAOLOGY mark, and further asserts that the Respondent has not been commonly known by the disputed domain name. The Complainant additionally contends that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
To the contrary, the Complainant submits that the Respondent is using the disputed domain name to create Internet user confusion by creating a false impression of affiliation with the Complainant or the Complainant’s TEAOLOGY products, in order to sell competing tea products. The Complainant submits that the Respondent’s intentional registration and use of the disputed domain name in an attempt to exploit and profit from the good will associated with the Complainant’s mark constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name differs from the Complainant’s TEAOLOGY mark only by the omission of the letter “o” from the suffix “ology”. The Panel finds this is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s mark, particularly given that the resulting suffix “logy” is similar in meaning to the suffix “ology”.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s mark, and it is undisputed that the Respondent has not been authorized to use the Complainant’s mark or commonly known by the disputed domain name. The Respondent notwithstanding has registered and used the disputed domain name with a website on which tea products competing with those offered by the Complainant under its TEAOLOGY mark are offered for sale.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it more likely than not that the Respondent was aware of the Complainant and had the Complainant’s TEAOLOGY mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights through the creation of Internet user confusion. Internet users diverted to the Respondent’s website could be confused whether they have arrived at the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, given the Respondent’s overriding intent to exploit and profit from the goodwill and repute of the Complainant’s mark. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. Further, as noted above, the Respondent has not been commonly known by the disputed domain name or authorized to use the Complainant’s mark. In short, and in the absence of any reply by the Respondent, the record evinces that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the record evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the deliberate creation of Internet user confusion. The record on balance reflects that the Respondent registered and has used the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 5, 2013
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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