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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vienna Beef Ltd v. Texas International Property Associates

Case No. D2007-1133

1. The Parties

Complainant is Vienna Beef Ltd., Chicago, Illinois, United States of America, represented by Patzik, Frank & Samotny Ltd., United States of America.

Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Offices of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <viennahotdogs.com>, is registered with Compana, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue, with a second request on August 17. On August 17, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2007. A Response was filed with the Center on September 10, 2007.

The Center appointed Lorelei Ritchie de Larena as the sole panelist in this matter on September 26, 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

Complainant has been in business since 1893, commonly doing business under the name and mark VIENNA. Presently, Complainant manufactures and distributes a wide variety of food products, including hotdogs. Complainant is a widely-known food manufacturer and distributor in various regions of the world, including North America, Europe, and the Pacific Rim.

Complainant has registered, and is the owner of, the VIENNA mark. Complainant’s predecessor-in-interest obtained registration of the VIENNA mark from the USPTO in class 46, for “meat products” including “frankfurters” in 1959, with first use – and first use in commerce – on October 1, 1932. One of Complainant’s products is the VIENNA FRANKFURTER, also commonly referred to by customers as the “Vienna hot dog.”

Respondent is not affiliated with Complainant and does not have a license to use Complainant’s marks. The registrar’s records indicate that Respondent registered <viennahotdogs.com> on February 4, 2005. As of the date the Complaint was filed, Respondent was using <viennahotdogs.com> to resolve to a website offering merchandise and advertisements from Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar – The domain name <viennahotdogs.com> incorporates Complainant’s VIENNA mark in full, adding only the generic word “hotdogs,” a product for which Complainant is well-known.

(b) Rights or Legitimate Interests – Respondent has no rights or legitimate interest with respect to the domain name <viennahotdogs.com>. Complainant owns a trademark registration for the mark VIENNA, which it uses in commerce, including to sell hot dogs. Complainant’s registration of the mark predates Respondent’s registration of the domain name at issue by almost half a century. Complainant contends that Respondent does not own any trademark or other intellectual property rights in the marks VIENNA or VIENNA HOT DOGS, and that Respondent has never used either as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted Respondent to use its VIENNA mark.

(c) Registered and Used in Bad Faith – Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) disrupting the business of a competitor by diverting traffic through confusion; (ii) diverting traffic through confusion for monetary gain by offering links to competing products; (iii) knowledge of the Complainant’s long and continuous use of the VIENNA mark at the time of registration and knowledge that Respondent had no right, title or interest, whatsoever, in the mark or domain name; and (iv) engaging in a pattern of registering infringing domain names.

B. Respondent

Respondent filed a response a day after it was due. Pursuant to paragraph 10 of the Rules, the Panel has the authority to consider and weigh supplemental or late materials as it deems fit. See also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (<talk-city.com>). The Panel finds that the response, although a day late, is very helpful to the proceedings. In particular, Respondent “agrees to the relief requested by the Complainant,” and “requests that the Panel order the immediate transfer of the disputed domain name.”

Respondent cites a prior UDRP case that addresses the three typical options a neutral may consider when a respondent agrees to transfer the subject domain name, quoting The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (<cartonnetworkya.com>; et. al.):

(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Sociйtй Franзaise du Radiotйlйphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).

This Panel considers it wise, absent a signed stipulation between the parties or a withdrawal of the Complaint, to follow the third option and proceed to consider the merits of the case.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is a well-known manufacturer and distributor of meat products, selling, among other things, hot dogs. Complainant sells its meat products in North America, Europe, and the Pacific Rim. Complainant’s business name incorporates its mark, VIENNA, which Complainant’s predecessor-in-interest registered with the United States Patent and Trademark Office as early as 1959 in connection with “meat products,” including “frankfurters.” One of Complainant’s products is the VIENNA FRANKFURTER, also commonly referred to by customers as the “Vienna hot dog.”

The domain name <viennahotdogs.com> is identical to Complainant’s mark, VIENNA, with only the addition of the descriptive word, “hot dogs,” which would indicate to web users a place where they could find information about VIENNA FRANFURTERS or “Vienna hot dogs.” In fact, Complainant does sell hot dogs as one of its meat products.

UDRP panels have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the Complainant. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (July 11, 2001) (“Mercedesshop.com”); Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001) (“Microsofthome.com”).

The Panel therefore finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel accepts Complainant’s contention regarding Respondent’s lack of rights or legitimate interests in the domain name <viennahotdogs.com>, and Respondent does not dispute them. Complainant owns a trademark registration for the mark VIENNA, which it uses in commerce, particularly for sale of its meat products including hot dogs. Complainant’s registration of the VIENNA mark for use with meat products including “frankfurters” predates Respondent’s registration of the confusingly similar <viennahotdogs.com> domain name by almost half a century.

Complainant contends that Respondent does not own any trademark or other intellectual property rights in the mark VIENNA, with regard to hot dogs, and that Respondent has never used VIENNA or VIENNA HOT DOGS as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted Respondent to use these marks. Respondent does not dispute these allegations.

Finally, the Panel observes that Respondent has agreed, via its filed Response, to transfer the domain name <viennahotdogs.com>, and so concurs in the relief requested by Complainant. The Panel construes Respondent’s offer as indicative of Respondent’s knowledge of its lack of rights and legitimate interest in the domain name.

The Panel therefore finds that Complainant has satisfied the second requirement under paragraph 4(a)(iii) of the Policy.

C. Registered and Used in Bad Faith

Three primary factors lead the Panel to infer and conclude that Respondent had knowledge of Complainant’s trademark and has registered and used the domain name <viennahotdogs.com> in bad faith.

First, Complainant’s predecessor-in-interest registered the VIENNA mark as early as 1959 in connection with “meat products,” including “frankfurters.” This registration predates Respondent’s registration of the domain name <viennahotdogs.com> by almost half a century. Complainant is well-known in the United States of America – home to both Complainant and Respondent – and elsewhere, for its meat products marketed under the VIENNA brand. One of Complainant’s products is the VIENNA FRANKFURTER, also commonly referred to by customers as the “Vienna hot dog.”

Second, the Panel finds that the Respondent has chosen to register Complainant’s mark as a domain name in order to divert Internet traffic away from Complainant’s website for the purpose of disrupting Complainant’s business for monetary gain. Respondent’s website actually directs users to merchandise and advertisements from Complainant’s competitors. This conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is considered bad faith under the Policy. See, Amazon.com, Inc. v. MCL International Ltd., WIPO Case No. D2000-1678 (<yuamazon.com>) and American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335 (<aifd.com>).

Third, engaging in a pattern of registering infringing domain names can be indicative of “bad faith” under UDRP paragraph 4(b)(ii). The Panel finds that Complainant has provided sufficient evidence of such pattern by Respondent. In particular, Respondent has been ordered to transfer domain names by a number of other UDRP Panels: The Benevolink Corporation v. Texas International Property Associates, WIPO Case No. D2007-0404 (<benovolink.com>); Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334 (<associtedbank.com>); Barry D. Sears, Ph.D. v. Texas International Property Associates, WIPO Case No. D2007-0284 (<zone-diet-products.com>); Fifth Third Bancorp. v. Texas International Property Associates, WIPO Case No. D2007-0537 (<53rewards.com>); SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464 (<surpayroll.com>; et. al.); and Sports Holdings Inc. v. Texas International Property Associates, WIPO Case No. D2007-0430 (<hibbats.com>; et. al.).

Accordingly, the Panel finds that Complainant has satisfied the third element under paragraph 4(a)(iii) of the Policy.

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 <viennahotdogs.com> be transferred to the Complainant.


Lorelei Ritchie De Larena
Sole Panelist

Dated: October 10, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1133.html

 

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