Hormel Foods Corporation v. CORY BOLLUM / HORMEL FOODS
Claim Number: FA2207002003099
Complainant is Hormel Foods Corporation (“Complainant”), represented by Jodi A. DeSchane of Ballard Spahr LLP, Minnesota, USA. Respondent is CORY BOLLUM / HORMEL FOODS (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hormelfoodscompany.com> (the “disputed domain name”), registered with NameCheap, Inc. (the “Registrar”)
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2022; the Forum received payment on July 6, 2022.
On July 6, 2022, the Registrar confirmed by e-mail to the Forum that the <hormelfoodscompany.com> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. The Registrar 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2022 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@hormelfoodscompany.com. Also on July 7, 2022, 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 August 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was founded in 1891 in Austin, Minnesota. What began has a meat packing plant in an abandoned creamery has grown into a billion-dollar Fortune 500 company operating in more than 80 countries. For over 130 years, Complainant has continuously provided high quality meat products, along with a variety of other food products. Complainant claims rights in the HORMEL trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 1,013,611, registered on June 17, 1975; Registration No. 5,091,142, registered on November 29, 2016) (hereinafter referred to as the “HORMEL Mark”).
Complainant claims that Respondent’s <hormelfoodscompany.com> disputed domain name is identical or confusingly similar to Complainant’s HORMEL Mark as it incorporates the mark in its entirety and adds the terms “foods” and “company”, as well as the “.com” generic top-level domain (“gTLD”).
In addition, Complainant contends that Respondent lacks rights and legitimate interests in the <hormelfoodscompany.com> disputed domain name since Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HORMEL Mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent sends emails associated with the disputed domain name to effectuate a phishing scheme.
Finally, Complainant contends that Respondent registered and uses the <hormelfoodscompany.com> disputed domain name in bad faith. First, Respondent uses the disputed domain name to pass off as Complainant for commercial gain. Moreover, Respondent uses the email address associated with the confusingly similar domain name to disrupt Complainant’s business in bad faith. Respondent uses the disputed domain name to perpetuate a phishing scheme. Moreover, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HORMEL Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the HORMEL Mark based on its trademark registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HORMEL Mark, as it incorporates the HORMEL Mark in its entirety, merely adding the terms “foods” and “company”, followed by the gTLD “.com”. The Panel also finds that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
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”).
The Panel finds that the disputed domain name is confusingly similar to the HORMEL Mark as set forth below.
First, Complainant has trademark rights in the HORMEL Mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Second, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s HORMEL Mark. It contains Complainant’s mark in its entirety with the addition of the terms “foods” and “company”, and then followed by the gTLD “.com”. Such additions do not prevent the disputed domain name from being confusingly similar to the HORMEL Mark as long as the HORMEL Mark itself is recognizable.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its HORMEL Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
Second, the Panel concludes that the fame of the HORMEL Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the HORMEL Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its HORMEL Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Finally, Respondent used the disputed domain name to mislead third parties into paying fraudulent purchase orders, thinking they were communicating with Complainant. Specifically, Respondent created multiple fraudulent purchase orders for computer equipment from World Data Products using “___@hormelfoodscompany.com” email addresses. Respondent’s fraudulent purchase orders featured the HORMEL Mark as well as email addresses containing the names of Complainant’s actual employees. The fraudulent purchase orders were filled, and the computers were picked up by someone unaffiliated with Complainant, thus demonstrating bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hormelfoodscompany.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: August 15, 2022
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