Frontier Distribution LLC v. Belize Domain WHOIS Service Lt.
Case No. D2007-1203
1. The Parties
The Complainant is Frontier Distribution LLC, Norway, Iowa, United States of America, represented by Shuttleworth & Ingersoll P.L.C., United States of America.
The Respondent is Belize Domain WHOIS Service Lt., City of Belmopan, Belize, with an internet address at ZIPA L.L.C., New Orleans, Los Angeles, United States of America.
2. The Domain Name and Registrar
The disputed domain name <auracacia.org> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007, by e-mail and on August 7, 2007, by hard copy naming ZIPA LLC as the Registrant. On August 31, 2007 by e-mail and on September 3, 2007, by hard copy an Amended Complaint correcting the name of the domain name on one page. On August 17, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On the same day Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response advising that the current registrant is Belize Domain WHOIS Service Lt. and providing the contact details. On September 11, 2007 the Center by a Complaint Deficiency Notification advised the Complainant that according to information received from the concerned registrar the registrant of record is Belize Domain WHOIS Service Lt. The Complainant forwarded to the Center by e-mail on September 12, 2007 and by hard copy on September 17, 2007 the Second Amended Complaint in which the Complainant added the name of Belize Domain WHOIS Service Lt. to the name ofZIPA LLC as the name or names of the Respondent.
The Center verified that the Second Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2007.
The Center appointed Joan Clark as the sole panelist in this matter on October 22, 2007. 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
According to the WHOIS Search Results of Network Solutions the Registrant is Belize Domain WHOIS Service Lt., with registrant, administrative and technical e-mail contact addresses at “[email protected]”. Network Solutions also provided for this domain name an IP address “69.46.226.167”, which is for the name “Zipa, LLC”. The registrar, Intercosmos Media Group d/b/a directNIC.com, in answer to enquiry from the Center, confirmed that the Respondent is Belize Domain WHOIS Service Lt. The Panel is of the opinion that the Respondent in this case is Belize Domain WHOIS Service Lt.
The domain name in issue was created on February 6, 2006 and has an expiration date of February 6, 2008.
The Complainant declared it is the owner of numerous United States trademark registrations in connection with manufacture and sale of aromatherapy products, for the words “aura cacia” alone or in combination with other words, some of which are declared to have been used as early as 1981.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that long prior to Respondent’s registration of the disputed domain name <auracacia.org> the Complainant has engaged in, and is now engaged in the manufacture and sale of aromatherapy products, including a selection of essential oils, room sprays, room deodorizers, diffusers, perfumes and ready-to-use skin care products. The Complainant further asserts that long prior to Respondent’s registration of the domain name, the Complainant has used and is now using the trademark AURA CACIA in connection with certain of its products and is the owner of multiple U.S. applications and registrations for the mark AURA CACIA. Some of these are for the words AURA CACIA alone, and some are for these words in combination with other words.
The Complainant states it has made a substantial investment in advertising and promoting its AURA CACIA products and that the Complainant’s customers have come to know and recognize Complainant’s mark and associate it with Complainant and the goods sold by it, and further that the Complainant has built goodwill in connection with the sales of products under its mark.
The Complaint maintains that the disputed domain name <auracacia.org> is identical and confusingly similar to the Complainant’s trademark AURA CACIA.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) many of the products listed at the domain name are identical to Complainant’s products but do not originate from Complainant, (2) Respondent has not been commonly known by the domain name, (3) Respondent is not making a legitimate non commercial use or fair use of the domain name, and (4) Respondent registered the domain name long after Complainant commenced use of the trademark AURA CACIA in connection with its products.
The Complainant also asserts that the domain name was registered and is being used in bad faith because the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other on-line 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 the Respondent’s website or location that is identical to Complainant’s AURA CACIA branded products except that they are not sourced from Complainant and they do not originate from Complainant. The Complainant attaches a copy of the opening page of the website for the domain name in question which displays the domain name as a trademark, linking to the products of sources and origins other than the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel notes that it would have been helpful if the Complainant had provided additional supporting material for its claimed marks, such as trademark certificates, or to the extent that the Complainant would claim unregistered marks, evidence of use in commerce such as advertising and promotional materials.
However, as the Complainant has provided the name, registration numbers and jurisdiction of its claimed marks, the Panel has exercised its discretion to conduct limited independent research of the USPTO website. The Panel has noted several marks including the term “aura cacia”, some of which are indeed registered in the name of the Complainant.
The disputed domain name <auracacia.org> is as nearly identical as possible to the Complainant’s trademark AURA CACIA, since a domain name normally does not have a space between its component parts and the addition of a top level domain suffix such as “.org” has been held in numerous decisions not to distinguish a domain name from an otherwise similar or identical trademark.
On that basis, the Panel finds the disputed domain name to be confusingly similar if not identical to the Complainant’s trademark AURA CACIA.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has produced no evidence of any kind to refute this position. It has been held in a number of decisions that while the overall burden of proof is on the Complainant, this element of proving the Respondent has no rights involves the Complainant proving matters which are peculiarly within the knowledge of the Respondent, that is, of proving a negative, often an impossible task. When the Complainant has made the allegation with some facts in support, the Respondent has a case to answer. If the Respondent then fails to demonstrate its rights or legitimate interests in respect of the domain name the complaint succeeds under this head. See Intocast AG v. Lee Daeyoon,
WIPO Case No. D2000-1467; Julian Barnes v. Old Barn Studies Limited,
WIPO Case No. D2001-0121.
As the Respondent has failed to respond and to answer the Complainant’s allegations, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the disputed domain name in 2006, it must have been aware of the Complainant’s trademarks including AURA CACIA, one of which was first used in 1981 and another in 2001, according to the Complaint. Indeed, the opening page on the website of the disputed domain name, provided by the Complainant, shows AURA CACIA as a trademark, indicating Respondent’s prior knowledge of this mark as the inspiration for the domain name. The Respondent’s web page contains links to the products of sources and origins other than the Complainant. It is to be assumed that the Respondent received or intended to receive compensation on a pay-per-click basis for referrals to the other sources and origins.
The Panel concludes that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products there displayed.
This is another example of the Respondent’s conduct as a frequent offender and the subject of numerous WIPO and National Arbitration Forum UDRP decisions ordering the transfer to various complainants of domain names registered by the Respondent incorporating the respective complainants’ trademarks. See Kforce Inc. v. Belize Domain WHOis Service Lt.,
WIPO Case No. D2007-1317 and decisions cited therein.
The Panel finds that the domain name <auracacia.org> was registered and is being used in bad faith.
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 <auracacia.org> be transferred to the Complainant.
Joan Clark Sole Panelist
Dated: November 5, 2007
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