Complainants are No Limit, LLC and Newman’s Own, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States (“Complainants”)1 .
Respondent is Lisa Katz, Domain Protection LLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on March 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on March 31, 2020. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 1, 2020. 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 Newman’s Own, Inc. is a US company co-founded in 1982 by the American actor Paul Newman which sells a line of food and beverage products. Complainant Newman’s Own, Inc. donates all of its after-tax profits to charity, having donated around USD 500 million since its inception. Complainant No Limit, LLC is the owner of multiple US registrations for the NEWMAN’S OWN trademark, including US trademark registration numbers 1,280,046 (registered on May 29, 1984) and 1,581,795 (registered on February 6, 1990). Complainant Newman’s Own, Inc. is a licensee of the Complainant No Limit, LLC’s NEWMAN’S OWN trademarks (“Complainants’ Mark”). Complainant No Limit, LLC also owns and operates the The disputed domain name, Complainants allege that the disputed domain name is confusingly similar to Complainants’ Mark because it essentially reproduces the NEWMAN’S OWN Mark in its entirety. The only difference between the disputed domain name and Complainants’ Mark is that the former replaces the “w” with a “u” in the term “Newman”. Complainants argue that anyone seeing the disputed domain name will reasonably conclude that it is related to, endorsed by, or affiliated with Complainants, thereby creating a likelihood of confusion. Complainants also allege that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainants, Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainants in any way and was never licensed or authorized to use Complainants’ Mark. Complainants further argue that Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because Respondent is clearly deriving a financial benefit in the form of pay-per-click revenue resulting from the diverted web traffic. Complainants argue that these facts, along with the lack of any evidence demonstrating use that the disputed domain name is being used in connection with a bona fide offering of goods and services, clearly indicate that Respondent acquired the disputed domain name for the sole purpose of exploiting Complainants rights, title, interest, and goodwill in the NEWMAN’S OWN Mark. Lastly, Complainants allege that Respondent registered and is using the disputed domain name in bad faith. According to Complainants, Respondent must have had constructive or actual knowledge of Complainants’ rights in the NEWMAN’S OWN Mark given Respondent’s incorporation of an obvious misspelling of Complainants’ Mark, Respondent’s inclusion of links advertising goods and services substantially similar to those offered by Complainants and given that the disputed domain name was registered well after Complainants’ Mark became well known to consumers. Complainants argue that registration and use of the disputed domain name is a classic example of typosquatting, which by itself constitutes evidence of bad faith. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainants have provided evidence that it has rights in the NEWMAN’S OWN mark through its United States registrations. With Complainants’ rights in the NEWMAN’S OWN Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainants’ Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is well established that a domain name consisting of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. see also Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775. Here, the only differences between the disputed domain name and Complainants’ Mark are the substitution of the letter “w” with the letter “u” in the term “Newman” and the absence of the apostrophe in the disputed domain name (which for technical reasons may not be reproduced). The conduct of substituing letters, commonly referred to as “typo squatting”, creates a virtually identical and/or confusingly similar domain name to Complainants’ Mark under paragraph 4(a)(i) of the Policy. America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918, Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol,WIPO Case No. D2001-0654, AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937. The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainants’ Mark. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, the Panel finds that Complainants have made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut Complainants’ contention that they have never authorized, licensed, or permitted Respondent to use the NEWMAN’S OWN mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. According to the evidence on record, the disputed domain name resolves to a parked page containing various links that would lead Internet users to websites offering goods similar to those offered under Complainants’ Mark. Panels have consistently found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9; see also Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, bad faith can be found in the disputed domain name’s registration and use. Complainants provided ample evidence showing its widespread use and numerous registrations of the NEWMAN’S OWN mark which long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the NEWMAN’S OWN trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainants’ Mark. See WIPO Overview 3.0, section 3.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the NEWMAN’S OWN mark (minus the apostrophe), merely substituting the letter “w” with the letter “u” in the term “Newman”. Therefore, bad faith registration of the disputed domain name can be presumed. Furthermore, the disputed domain name resolved to a parked page containing some links that lead visitors to websites offering goods similar to those offered by Complainants. Panels have determined that the registration and use of domain names such as this one in this manner constitute an attempt 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 the source, sponsorship, affiliation, or endorsement of the respondent’s website. Aetna Inc. v. Above.com Domain Privacy / Belcanto Investment Group Limited,WIPO Case No. D2018-0487; LEGO Juris A/S v. Park KyeongSook,WIPO Case No. D2016-1195; see also WIPO Overview 3.0, section 3.1.4. This demonstrates that the disputed domain name was also used in bad faith by Respondent. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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 Brian J. Winterfeldt 1 Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. Given that Complainant Newman’s Own, Inc. is a licensee of Complainant No Limit, LLC’s NEWMAN’S OWN trademark and, thus, Complainants have common grievances against Respondent, the Panel permits the consolidation of their claims against Respondent in this proceeding.
Sole Panelist
Date: May 13, 2020
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