WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mike’s Farm, Inc. v. Registration Private, Domains By Proxy, LLC / Flora Escobar
Case No. D2021-1927
1. The Parties
The Complainant is Mike’s Farm, Inc., United States of America (“United States”), represented by Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P., United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Flora Escobar, Philippines.
2. The Domain Name and Registrar
The disputed domain name <mikesfarm.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the registrar for the disputed domain name;
(b) confirming that English is the language of the registration agreement; and
(c) 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 the Complainant on June 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 30, 2021.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 2, 2021. 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
The Complainant is an agri-tourism farm in North Carolina in the United States offering seasonal products and services, including retail and online retail store services, hayrides, pumpkin & strawberry picking, a family style restaurant, venues for weddings and other events. According to the Complaint, it has been operating under the name “Mike’s Farm” since at least the early 1980s.
Amongst other things, it owns United States Registered Trademark No. 5,762,156, MIKE’S FARM, in respect of a range of retail store services (including online retail store services) for a wide range of consumer goods and holiday themed novelties. This trademark has been registered since May 28, 2019 and claims a first use in commerce in the United States in December 1983. It is registered in the Principal Register.
For many years, the Complainant promoted its services and offered for sale its products from a website to which the disputed domain name and also the domain name <mikesfarmnc.com> resolved. The domain <mikesfarmnc.com> continues to resolve to that website.
The disputed domain name had been registered for the Complainant by its web developer. However, the Complainant and the web developer fell into some sort of dispute and the registration of the disputed domain name was not maintained when it fell due for renewal in May 2021.
On or about May 4, 2021, the disputed domain name was offered for sale through some form of public auction. The Complainant was the unsuccessful underbidder. The Respondent, or someone through whom the Respondent derives her claim, was the successful bidder.
Following the auction, from about May 4, 2021 until about June 2, 2021, the disputed domain name resolved to a website which continued to display the Complainant’s content.
From about June 3, 2021 until June 9, 2021, things became rather more racy and the disputed domain name resolved to a website offering gambling services featuring what the Complainant considers “a scantily clad woman”.
From June 9, 2021, the disputed domain name did not resolve to a website displaying content.
On June 25, 2021, the website changed again. This time it featured the logo-form of the Complainant’s trademark and, according to the Complainant, other images from the Complainant’s website. There is also content which appears to be in Tagalog including links headed “Restoran”, “Hadiah”, “Informasi” and “Survernir”. The website displays the Complainant’s telephone number, but an email address which is not associated with the Complainant at all. It also includes a copyright notice:
“© Copyright 2021 Mike’s Farm. All Rights Reserved.
Yoga Fitness | Developed by Blossom Themes. Powered by Wordpress.”
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present her or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel notes that the website to which the disputed domain name currently resolves displays text in both English and (what the Panel assumes to be) Tagalog. When the website offered gambling services, the language used on the website was Bahasa Indonesian.
Under the Rules paragraph 11, the language of the registration agreement is the language of the proceeding unless the parties agree, or the Panel orders, otherwise. The Registrar has confirmed that the language of the Registration Agreement is English.
The Complainant contends that the default rule should apply and points out, as noted above, that the website to which the disputed domain name currently resolves is in the English language at least in part. The Respondent has not requested that any different rule apply. In these circumstances, the Panel considers that no good reason has been shown why the rule under paragraph 11 of the Rules should not apply. Accordingly, the Panel will apply English as the language of the proceeding.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the trademark registered in the United States for “Mike’s Farm”.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) , section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark omitting the apostrophe. The omission of a punctuation mark indicating the possessive could be disregarded as trivial.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is at least confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The website to which the disputed domain name resolves does suggest that it may be being used in connection with some sort of business. It is not clear from the record, however, whether or not there is a business underlying the website.
More importantly, however, the website uses the Complainant’s logo form of its trademark and other images, including photographs, which appear to have been copied from the Complainant’s website. The website also sets out the Complainant’s telephone number and provides an email address which is not associated with the Complainant but which could easily be mistaken as connected with the Complainant.
As the Complainant contends, all these factors convey a very strong representation that the website is being operated by the Complainant. That representation is false. Given that, the Panel is not prepared to countenance the use of the disputed domain name in this way as being use in connection with a good faith offering of goods or services.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Bearing in mind the changes to the website(s) to which the disputed domain name resolved after the public auction on or about May 4, 2021, it is not clear to the Panel whether or not the Respondent was the successful bidder at that auction or has in some way acquired the registration after the event.
The Panel notes that, following the auction, there appear to have been four stages or types of use:
(1) From about May 4 to June 2, 2021, the website continued to display the Complainant’s content;
(2) From June 3 to 9, 2021, the gambling site;
(3) From June 9 to 24, 2021, the disputed domain name did not resolve to an active website; and
(4) Since June 25, 2021, the disputed domain name has resolved to the Mike’s Farm English / Tagalog version.
If the Respondent became the registrant of the disputed domain name only at some point between June 9 and 25, 2021, that would count as a new registration and the Respondent’s good faith falls to be considered at that point. In this scenario, the Panel would readily infer that the disputed domain name was registered for the purpose for which it has been used since June 25, 2021 - to falsely represent that the operator of the website is the Complainant or in some way associated with the Complainant. The inclusion on the website of what appears to be an exact replica of the Complainant’s logo form of trademark (let alone images which the Complainant contends have been copied from the Complainant’s website) excludes the possibility of registration and use of the disputed domain name without knowledge of the Complainant’s prior use.
If the Respondent was the successful bidder at the public auction, the sequence of events outlined above does not lead to a different conclusion. If the Respondent was the successful bidder at the auction, the differing types of use suggest some experimentation into the best way to exploit the disputed domain name. The first and fourth stages involve passing off the website under the control of the Respondent as being operated by the Complainant or in some way associated with it. The second stage suggests a clear intention to use the disputed domain name to attract potential customers of “Mike’s Farm” to the gambling services on offer. The Complainant is particularly aggrieved by that use which it considers is incompatible with the wholesome, family friendly image it has developed. The inferences arising from each of these types of use would readily lead to findings that the disputed domain name was registered and is being used in bad faith.
In the absence of explanation from the Respondent, therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
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, <mikesfarm.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: August 16, 2021