DECISION

Harry and David v. Anshu Pathak

Claim Number: FA0208000122146

PARTIES

Complainant is Harry and David, Medford, OR (“Complainant”) represented by Devon J. Zastrow, of Klarquist Sparkman, LLP.  Respondent is Anshu Pathak, Diamondbar, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <freshfruitofthemonthclub.com>, registered with TierraNet, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2002; the Forum received a hard copy of the Complaint on August 20, 2002.

On August 22, 2002, TierraNet, Inc. confirmed by e-mail to the Forum that the domain name <freshfruitofthemonthclub.com> is registered with TierraNet, Inc. and that Respondent is the current registrant of the name.  TierraNet, Inc. has verified that Respondent is bound by the TierraNet, Inc. 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 August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2002 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@freshfruitofthemonthclub.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 September 30, 19 days after the time for filing a response, Respondent submitted an e-mail, which failed to address the allegations of the Complaint.  In the e-mail Respondent indicates that he sold the domain name for $10,000.00 and threatens a lawsuit.  Since the e-mail is untimely and does not address the allegations of the Complaint, the Panel will not consider the e-mail as a proper response. 

On September 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 averments:

1. Respondent’s <freshfruitofthemonthclub.com> domain name is confusingly similar to Complainant’s registered FRUIT-OF-THE-MONTH CLUB mark.

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

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

B. Respondent failed to submit an appropriate Response in this proceeding.

FINDINGS

Complainant is a nationally recognized vendor of high quality foods, including, inter alia, fresh, dried and candied fruits, fruit preserves, nuts, chesses, chocolate candy, cakes and cookies. Complainant holds numerous trademark registrations for its FRUIT-OF-THE-MONTH CLUB mark, including U.S. Patent and Trademark Office (“USPTO”) Reg. No. 386,023 registered on March 25, 1941. Complainant’s aforementioned trademark is listed on the Principal Register of the USPTO and lists first use in commerce as 1936.

Respondent registered the <freshfruitofthemonthclub.com> domain name on February 3, 2001. Complainant’s investigation of Respondent’s activities indicates that Respondent’s domain name originally resolved to a website that offered fresh fruit, and memberships into a “Fresh Fruit of the Month Club.” Upon notice of Respondent’s use of the subject domain name, Complainant alerted Respondent of its established trademark rights in the FRUIT-OF-THE-MONTH CLUB mark by a letter dated March 14, 2002. Respondent refused to cease using the domain name and redirected the subject domain name to <sex.com>, a “hard-core pornography site, featuring various individuals engaged in sexual activity.”

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 the 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 the 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 FRUIT-OF-THE-MONTH CLUB mark by successfully registering the mark with various authorized trademark authorities, and subsequent continuous use of the mark since 1936.

Respondent’s <freshfruitofthemonthclub.com> domain name is confusingly similar to Complainant’s FRUIT-OF-THE-MONTH CLUB mark. Although Complainant asserts that Respondent’s domain name is “substantially identical,” the Policy enunciates only two standards, namely, “confusingly similar” and “identical.” Respondent’s domain name incorporates Complainant’s registered mark in its entirety, deviating only by the deletion of hyphens and the introduction of the related word “fresh.” Previous Panels have determined that the deliberate introduction or deletion of grammatical nuances in a famous mark fails to detract from the overall presence of the mark in the second-level domain. Additionally, the introduction of a word that has an obvious connection with Complainant’s mark and corresponding products fails to create a distinct and separate mark capable of overcoming a “confusingly similar” analysis under Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

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

Rights or Legitimate Interests

Complainant has, through its Submission and contentions, produced reliable, credible and relevant evidence asserting that Respondent does not have any rights or legitimate interests in the domain name, thereby shifting the burden of production to Respondent. Respondent’s failure to submit a Response means that Respondent has failed to produce any set of circumstances that would establish rights or legitimate interests in the <freshfruitofthemonthclub.com> domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Furthermore, as a consequence of Respondent’s failing to contest Complainant’s averments, the Panel is permitted to resolve all reasonable inferences in favor of Complainant. 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).

Complainant has submitted uncontested evidence that indicates Respondent’s subject domain name resolves to <sex.com>, a “hard-core pornography site, featuring various individuals engaged in sexual activity.” Simply having a domain name resolve to a website that contains sexual content does not per se demonstrate a lack of rights or legitimate interests. However, circumstances indicate that Respondent is attempting to tarnish the reputation associated with Complainant’s mark by having its confusingly similar domain name connect to a hardcore pornography website. Inevitably, a percentage of Internet users will reach Respondent’s website and believe that some affiliation or sponsorship exists between Complainant and the website. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate or fair use of the domain name under Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

There is no evidence indicating a legitimate relationship exists between Respondent and the <freshfruitofthemonthclub.com> domain name that would establish rights or legitimate interests under Policy ¶ 4(c)(ii). Complainant’s longstanding use of the mark creates a presumption that Respondent is not commonly known by a domain name that incorporates the FRUIT-OF-THE-MONTH CLUB mark in its entirety. Furthermore, there is nothing on Respondent’s website that would suggest a connection to the complex second-level domain as represented in the domain name. See 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); see also  Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Because Complainant’s FRUIT-OF-THE-MONTH CLUB mark is represented on the Principal Register of the USPTO, Respondent is presumed to have constructive notice of Complainant’s rights in the mark. Additionally, Complainant’s uncontested assertions reveal that Respondent originally utilized the domain name in connection with the offering of fresh fruit, placing itself in direct competition with Complainant. The Panel finds this more than mere coincidence. Respondent’s intentional registration of a domain name that is confusingly similar to another’s mark constitutes bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent’s bad faith use of the <freshfruitofthemonthclub.com> domain name is evidenced by its initial and current use of the domain name. Initially, Respondent attempted to capitalize from the notoriety of Complainant’s mark by diverting potential customers away from Complainant to its confusingly similar domain name and corresponding website. Respondent’s initial infringement was furthered by the fact that Respondent engaged in the identical business as Complainant by offering fruit in a “Fresh Fruit of the Month Club.”

Recently, Respondent has attempted to disparage and tarnish Complainant’s trademark by connecting the confusingly similar domain name to a hardcore pornography website. Respondent’s bad faith motivations are illustrated by the series of events that led to Respondent directing the subject domain name to the pornographic website. Complainant’s uncontested assertions indicate that Respondent redirected the domain name to the offensive website after being notified of Complainant’s rights in the FRUIT-OF-THE-MONTH CLUB mark. Both the initial use and current use of the <freshfruitofthemonthclub.com> domain name constitute bad faith use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).

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

DECISION

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

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

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 8, 2002

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