Hormel Foods Corporation v. NOOS
Claim Number: FA0201000103574
Complainant is Hormel Foods Corporation, Austin, MN (“Complainant”) represented by Linda M. Byrne, of Merchant & Gould, P.C.. Respondent is NOOS, Panama City (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <easyspam.com>, registered with Namebay.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 4, 2002; the Forum received a hard copy of the Complaint on January 7, 2002.
On January 8, 2002, Namebay confirmed by e-mail to the Forum that the domain name <easyspam.com> is registered with Namebay and that Respondent is the current registrant of the name. Namebay has verified that Respondent is bound by the Namebay registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.” 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 domain name be transferred from the Respondent to the Complainant.
1. Respondent’s domain name <easyspam.com> is confusingly similar to Complainant’s SPAM family of marks.
2. Respondent is not commonly known as <easyspam.com>. In addition, Respondent’s use of the domain name, to link to a pornographic website, does not demonstrate that its use is in connection with a bona fide offering or a legitimate noncommercial fair use. Therefore, Respondent cannot demonstrate a right or legitimate interest in <easyspam.com>.
3. Respondent intentionally attracts, for commercial gain, Internet users to its website at <easyspam.com> by creating a likelihood of confusion with Complainant’s mark SPAM as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has no legitimate reason for using <easyspam.com>, and the pornographic nature of Respondent’s website is indicative of Respondent’s bad faith.
No Response was received.
Complainant is the Hormel Foods Corporation and is a multinational manufacturer and marketer of consumer-branded meat and food products. Complainant has been in business since 1891. Complainant has several registered trademarks of SPAM and first registered SPAM on August 22, 1950, Registration Number 529,294. SPAM also has been registered in the home country of Respondent, Panama since 1954, Registration Number 4,135. Complainant has used SPAM as a trademark since at least 1937.
Complainant has sold over five billion cans of luncheon meat under the SPAM mark. As a result, Complainant has a 75% share of the canned meat market and the meat is eaten in 30% of all American homes.
Respondent registered <easyspam.com> on December 15, 2000. Upon information and belief, Respondent has registered the domain name in dispute for the purpose of redirecting users to a pornographic website.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
The domain name in dispute incorporates Complainant’s mark SPAM and is supplemented by the generic term “easy.” The addition of a generic term to a well-known trademark does not diffuse the fact that <easyspam.com> is confusingly similar with SPAM. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also World Wrestling Fed’n Entm't., Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (finding that the addition of a generic word to a domain name that fully incorporates a trademark does not change a finding of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights and legitimate interests. Respondent has failed to file a Response in the matter. As a result, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s use of <easyspam.com> to link to a website that offers pornographic services is not evidence of a bona fide offering of goods or services in connection with <easyspam.com> and thus Respondent has failed to satisfy Policy ¶ 4(c)(i). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).
There is no evidence that Respondent has been or is now known as <easyspam.com>, therefore the Panel finds Respondent is not commonly known as <easyspam.com> and cannot satisfy Policy ¶ 4(c)(ii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).
Respondent’s use of Complainant’s famous mark SPAM to attract users to its website that displays pornographic material is not a legitimate noncommercial or fair use and therefore, Respondent has not satisfied Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that use of a domain name to attract/redirect to another pornographic site is not a legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Since there is no evidence presented to show that Respondent intended to register <easyspam.com> for another use other than redirecting users to a pornographic website, the Panel will presume that Respondent’s intention was to register the domain name in dispute to divert users to a pornographic website. Further, after registering <easyspam.com>, Complainant alleges that Respondent’s use of the domain name in dispute is to redirect users to a pornographic website in which Respondent benefits financially. Therefore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to other on-line locations, by creating a likelihood of confusion with Complainant’s marks as to the source of the website and is evidence of bad faith as outlined by Policy ¶ 4(b)(iv). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <easyspam.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 11, 2002
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