DECISION

Incredibly Edible Delites, Inc. v. Bestinfo

Claim Number: FA0408000317257

PARTIES

Complainant is Incredibly Edible Delites, Inc. (“Complainant”) represented by Micah Gold-Markel, of AV8, Inc., 1310 N. 5th St., Suite 2A, Philadelphia, PA 19122.  Respondent is Bestinfo (“Respondent”), 2183 W. Buckingham Rd., #324, Richardson, TX 75081.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <incrediblyedibledelites.com>, registered with Dotster.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2004; the Forum received a hard copy of the Complaint on August 25, 2004.

On August 23, 2004, Dotster confirmed by e-mail to the Forum that the domain name <incrediblyedibledelites.com> is registered with Dotster and that the Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 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@incrediblyedibledelites.com by e-mail.

A timely Response was received on September 20, 2004 but was in electronic form only and has not been considered (ICANN Supplemental Rule 5).  As will be seen below, the Respondent’s electronic form Response disclaims any rights in the domain name at issue, and it is entirely appropriate to treat this proceeding as if it involved a default on Respondent’s part.

On September 28, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <incrediblyedibledelites.com> domain name is confusingly similar to Complainant’s INCREDIBLY EDIBLE DELITES mark.

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

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

B.  Respondent failed to submit a Response in this proceeding which complies with ICANN                   Supplemental Rule 5.

FINDINGS

Complainant registered the trademark INCREDIBLY EDIBLE DELITES on March 2, 1993 and subsequently registered the same as a service mark on June 10, 2003. The domain name at issue, <incrediblyedibledelites.com> is the same or confusingly similar to trademarks and service marks held by Complainant.

Complainant incorporated in the state of Pennsylvania under the name Incredibly Edible Delites, Inc. on August 8, 1985. On January 15, 2000 Complainant registered the domain name at issue through its webmaster’s company, The Glistening Web Corporation, and renewed the registration on June 17, 2002. While transferring webmasters from The Glistening Web Corporation to AV8 Inc. Complainant lost the domain name at issue through inadvertence. Respondent does not currently maintain a website at <incrediblyedibledelites.com> and has never done so in the past. Respondent has apparently not been known by any of its customers or potential customers as INCREDIBLY EDIBLE DELITES. Respondent has also not made any legitimate non-commercial use of the domain name at issue.

           

On February 6, 2004 Complainant attempted to contact Respondent via e-mail at the address listed in the Whois database regarding the registering of the domain name at issue. The Complainant never received a reply. Complainant attempted to contact Respondent a second time via certified mail and again received no response.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the INCREDIBLY EDIBLE DELITES mark (Reg. No. 1,755,554, issued Mar. 2, 1993; Reg. No. 2,723,829, issued June 10, 2003 and Reg. No. 2,854,562. issued June 15, 2004).  Complainant has established rights in the INCREDIBLY EDIBLE DELITES mark due to its registrations with the USPTO. 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).

Respondent’s <incrediblyedibledelites.com> domain name is identical to Complainant’s INCREDIBLY EDIBLE DELITES mark because the domain name entirely incorporates Complainant’s INCREDIBLY EDIBLE DELITES mark and merely adds the generic top-level domain “.com.” Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the domain name at issue because Respondent offered to authorize a transfer of the domain name from Respondent to Complainant, if Complainant initiated the transfer. Respondent’s offer to authorize a transfer of the domain name to Complainant is not a use in connection with any 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 Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question.); see also Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name.); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights).

Furthermore, Respondent is not commonly known by the <incrediblyedibledelites.com> domain name.  Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 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").

Registration and Use in Bad Faith

Respondent registered the domain name at issue in bad faith because Respondent offered to authorize a transfer of the domain name to Complainant following cease and desist communications and the institution of these proceedings.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

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

James A. Carmody, Esq., Panelist
Dated: October 11, 2004

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