Kellogg North America Company v. Steve Coles
Claim Number: FA1905001842241
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Steve Coles (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kelloggcompany.us>, registered with NameCheap, Inc..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 9, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <kelloggcompany.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kelloggcompany.us. Also on May 10, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a multinational food manufacturing company founded in 1906, selling breakfast foods, snacks, frozen foods, and beverages in more than 180 countries. Complainant has rights in its KELLOGG’S mark through registration with the United States Trademark and Patent Office (“USPTO”) (e.g. Reg. No. 0,115,348, registered in Feb. 6, 1917). See Amend. Compl. Ex. A. Respondent’s <kelloggcompany.us> domain name is confusingly similar to Complainant’s mark as Respondent merely added the generic, descriptive term “company,” removed the apostrophe and letter “s” at the end of the mark, and added the “.us” country code top-level domain (“ccTLD”).
ii) Respondent has no rights or legitimate interests in the <kelloggcompany.us> domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use as the disputed domain name resolves to webpage displaying links to third-party websites.
iii) Finally, the disputed domain name was registered or used in bad faith. Respondent registered the disputed domain name with full knowledge of Complainant’s business and rights in Complainant’s mark. In addition, Respondent has registered disputed domain name that infringes on Complainant’s mark before that was found to be registered in bad faith. Further, Respondent registered and used the disputed domain name to attract Internet users seeking Complainant for commercial gain. Finally, Complainant sent Respondent a cease-and-desist letter that was not responded to.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the disputed domain name on November 28, 2018.
2. Complainant has established rights in its KELLOGG’S mark through registration with the United States Trademark and Patent Office (“USPTO”) (e.g. Reg. No. 0,115,348, registered in Feb. 6, 1917).
3. The resolving webpage of the disputed domain name displays hyperlinks some of which directly reference Complainant’s mark.
4. A prior UDRP decision shows that Respondent has been ordered to transfer a different domain name infringing on Complainant’s KELLOGG’S mark.
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."
Paragraph 4(a) of the Policy requires that 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in its KELLOGG”S mark through registration with the USPTO (e.g. Reg. No. 0115348, registered in Feb. 6, 1917). See Amend. Compl. Ex. A. Registration with the USPTO is sufficient to demonstrate rights in a mark, under Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in its KELLOGG”S mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s KELLOGG’S mark, as it merely removes the apostrophe and letter “s,” adds the generic, descriptive term “company”, and the “.us” ccTLD. Removal of an apostrophe and/or the letter “s” is not sufficent to distingish a disputed domain name from complainant’s mark, under Policy ¶ 4(a)(i). See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the SHIPCARSNOW mark because the domain name simply removes the letter “s”). Furthermore, the use of additional generic and/or descriptive terms is not sufficent to distingish a disputed domain name from complainant’s mark, under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s KELLOGG’S mark, under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent is not commonly known by the disputed domain name nor licensed or authorized by the Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show respondent is or is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, Complainant provides the WHOIS information for the disputed domain name, showing “Steve Coles” as the registrant of the disputed domain name and there is no evidence in the record to suggest Respondent was authorized to use the mark. See Amend. Compl. Ex. B. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
The Panel further agrees that there is nothing in the available evidence that indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See PepsiCo, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Next, Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, presumably receiving pay-per-click fees. Using a disputed domain name to display pay-per-click hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides a screenshot of the resolving webpage of the disputed domain name that displays hyperlinks for which Respondent presumably receives click through fees. See Amend. Compl. Ex. C. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name, as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that the disputed domain name was registered or used in bad faith, as the Respondent has a pattern of bad faith registrations involving Complainant’s mark. Past conduct and UDRP history involving bad faith registrations can be evidence of respondent’s bad faith in registering the disputed domain name, under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant provides a prior UDRP decision showing that Respondent has been ordered to transfer a different domain name infringing on Complainant’s KELLOGG’S mark. See Amend. Compl. Ex. I. Therefore, the Panel finds that the disputed domain name was registered or used in bad faith, as the Respondent has a pattern of bad faith registrations involving Complainant’s mark.
Next, Complainant argues that disputed domain name was registered or used in bad faith, as Respondent used the disputed domain name to attach Internet users for commercial gain. The use of a disputed domain name to offer hyperlinks that are both competing and unrelated to the complainant’s business can be evidence of bad faith under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides screenshots of the resolving webpage of the disputed domain name that displays hyperlinks for which Respondent presumably receives click through fees and some of which directly reference Complainant’s mark. See Amend. Compl. Ex. D. Therefore, the Panel finds that the disputed domain name was registered or used in bad faith as Respondent used the disputed domain name to attract Internet users for commercial gain under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had knowledge of Complainant’s KELLOGG’S mark at the time of registering the disputed domain name. The Panel is not inclined to accept arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel observes that actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant points to its right in its KELLOGG’S mark, Complainant’s similar domain name of <kelloggcompany.com>, and the prior UDRP decision against the Respondent as evidence that the Respondent had actual knowledge of Complainant’s right in its KELLOGG’S mark. See Amend. Compl. Ex. A, E and I. The Panel infers, due to the fame of Complainant's mark and the resolving webpage of the disputed domain name displaying hyperlinks some of which directly reference Complainant’s mark that Respondent did have actual knowledge of Complainant’s mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kelloggcompany.us> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 12, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page