McNeil Nutritionals, LLC v. Prepress Consultants, Inc.
and Greg Irvin
Claim Number: FA0707001043195
PARTIES
Complainant is McNeil Nutritionals, LLC (“Complainant”), represented by Norm
D. St. Landau, of Drinker Biddle & Reath LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <splendacookbook.com> and <splendarecipes.com>,
registered with Network Solutions, Inc., <splendarecipies.com>
registered with Wild West Domains, Inc. and <splendarecipeclub.com>, registered
with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 23, 2007.
On July 23, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <splendacookbook.com> and <splendarecipes.com> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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”). This decision is being rendered in accordance with the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
On July 23, 2007, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <splendarecipies.com> domain name is
registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the Policy.
On July 23, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <splendarecipeclub.com> domain name
is registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Policy.
On August 1, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 21, 2007 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 postmaster@splendacookbook.com, postmaster@splendarecipes.com,
postmaster@splendarecipies.com and postmaster@splendarecipeclub.com by
e-mail.
A timely Response was received and determined to be complete on August 21, 2007.
On August 28, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names at issue be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant bases its case on its asserted famous SPLENDA mark, which
is the subject of the following
a. Incontestable
Reg. No. 1,544,079 – SPLENDA for “dietary aid, namely, a low-calorie
sweetening ingredient used in food products and beverages; chemical compound,
namely, a non-nutritional, low-calorie sweetening ingredient used in food
products and beverages; food product, namely, a low-calorie sugar substitute”;
registered on June 20, 1989; based on use since at least as early as August 29,
1988.
b. Reg.
No. 2,581,278 – SPLENDA (Stylized) for “food product, namely, a non-caloric
sugar substitute”; registered on June 18, 2002; based on use since at least as
early as September, 2000.
c. Appln.
Ser. No. 77/056,503 – SPLENDA for “printed publications, namely books,
magazines and pamphlets” and “interactive web site providing information
concerning low calorie sweeteners, recipes, cooking and baking, health
information and weight management”; filed on December 4, 2006; based on use
since at least as early as December 2003 and April 1998, respectively.
Copies of the registrations (but not the
application) are attached to the Complaint.
Complainant contends that since at least as early as 1988, Complainant,
through its predecessor-in-interest, has used the SPLENDA mark to identify its non-caloric sugar substitute and low
calorie-sweetening ingredient.
Complainant contends that since as early as July 2003, Complainant has
licensed the SPLENDA mark to authorized parties for use in connection with the
sale of cookbooks and recipes. Some of
these titles include SPLENDA Sweet
Indulgences, © 2003; SPLENDA No
Calorie Sweetener, © 2004; SPLENDA Sweet
Possibilities, © 2005; and The
SPLENDA World of Sweetness, Recipes for Homemade Desserts and Delicious Drinks,
© 2006.
Complainant contends that its SPLENDA products are sold throughout the
world and that millions of dollars of SPLENDA products have been sold in the
Complainant contends that over the years, Complainant has spent
millions of dollars in advertising and promoting the SPLENDA mark and building
consumer brand recognition worldwide. As
a result of Complainant’s marketing and advertising efforts, Complainant
contends that the SPLENDA mark has gained substantial goodwill and is famous
among consumers.
Complainant contends that it maintains a significant presence on the
Internet, including a website at <splenda.com> where it provides
information about its SPLENDA products, cooking tips, recipes and other related
information. The <splenda.com>
domain name is owned by Complainant’s parent company, Johnson & Johnson. Complainant supports these contentions by a
copy of its Web site and by a WHOIS record for that domain name.
Complainant contends that on December 23, 2003, more than fifteen years
after Complainant adopted and first used the SPLENDA mark, Respondent
registered the <splendacookbook.com>
and the <splendarecipes.com>
domain names. On July 10, 2004,
Respondent registered the domain name <splendarecipies.com>
and on October 11, 2006, Respondent registered the <splendarecipeclub.com> domain name in the name of “Greg
Irvin,” who appears to be the administrative contact for the other three domain
names. All four domain names share the
same administrative contact information, as indicated in the Whois database
searches, a copy of which is provided by Complainant.
Complainant contends that the <splendacookbook.com>
and <splendarecipes.com>
domain names default to a Network Solutions web page that contains sponsored
links to various recipes and cookbooks.
The <splendarecipies.com>
domain name resolves to an error page that states: “The page cannot be
displayed. The page you are looking for
is currently unavailable.” The <splendarecipeclub.com> domain
name defaults to a parked web site provided by Go Daddy containing sponsored
links to various recipes, weight loss products and other unrelated services
such as travel, real estate and dating services. Screen shots of each of
Respondent’s web sites are provided by Complainant.
Complainant contends that there is no evidence that Respondent has any
trademark or other rights in the SPLENDA mark or name. Further, Complainant contends that there is
no evidence that Respondent is commonly known by the <splendacookbook.com>, <splendarecipes.com>,
<splendarecipies.com> or <splendarecipeclub.com> domain
name.
Complainant contends that Respondent has no connection or affiliation
with Complainant, and that Complainant has not granted any license or consent,
express or implied, to Respondent to use the famous SPLENDA mark in a domain
name or in any other manner.
Complainant contends that on April 13, 2005, its attorney sent a cease
and desist letter via email and overnight courier, demanding that Respondent
transfer the <splendarecipes.com>
and <splendacookbook.com>
domain names to Complainant. According to Complainant, it appears that
Complainant’s email and letter were received because Complainant’s counsel did
not receive an undeliverable response to its email nor to its letter.
Complainant contends that its attorney sent a follow-up cease and
desist letter via email and overnight courier.
Complainant contends that it has received no response from Respondent
to its April 13, 2005 and May 12, 2005 communications.
Complainant contends that Respondent appears to have renewed the domain
name <splendarecipies.com> in
June 2006 and registered the domain name <splendarecipeclub.com>
in October 2006.
Complainant contends that the <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com> and <splendarecipeclub.com> domain
names are confusingly similar to Complainant’s famous SPLENDA mark as required
by ¶ 4(a)(i) of the Policy.
Complainant argues that the <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com> and <splendarecipeclub.com> domain
names are logical domain names a consumer would enter to find cookbooks and
recipes authorized by Complainant.
Complainant contends that, through authorized licensees, it has been
using the SPLENDA mark in connection with cookbooks and recipes for over four
years. Given Complainant’s asserted
exclusive rights in the famous SPLENDA mark, especially in connection with
cookbooks and recipes, and Complainant’s asserted presence on the Internet at
<splenda.com>, the average Internet user will assume that Respondent, its
domain names and its web sites are affiliated with, sponsored by, or otherwise
related to Complainant’s authorized cookbooks and recipes.
Complainant contends that the <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com> and <splendarecipeclub.com> domain
names incorporate the famous SPLENDA mark in its entirety. Insignificant differences include the addition
of the generic top-level domain name “.com,” as well as the addition of the
intentionally misspelled word “recipies” and the generic terms “cookbook,”
“recipes” and “recipe club.”
Complainant contends that the addition of a generic term that relates to
the goods identified by Complainant’s mark exacerbates the likelihood of
consumer confusion.
Complainant contends that the generic terms “cookbook,” “recipes” and
“recipe club” as used in Respondent’s domain names refer to possible
publications and recipes authorized by Complainant for its SPLENDA product and
Respondent’s use of the same will likely confuse consumers seeking
Complainant’s authorized cookbooks and recipes.
Complainant contends that it, as the SPLENDA trademark owner, exercises
control in how and by whom the SPLENDA mark is used in connection with the sale
of goods. Accordingly, use of the terms
“cookbooks,” “recipes” and “recipe club” by an unauthorized party as part of
the domain names <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com>, and <splendarecipeclub.com> increase
the likelihood of confusion with Complainant’s authorized products.
Complainant contends that the addition of a misspelled generic term
such as “recipies” does not negate a likelihood of confusion.
Complainant contends that Respondent has no rights or legitimate
interests in the <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com> and <splendarecipeclub.com> domain
names as required by paragraph 4(a)(ii) of the Policy.
As evidenced by Complainant’s federal registrations, Complainant
contends that it has the exclusive right to use and license the SPLENDA mark.
Complainant contends that Respondent has received no authorization or
license from Complainant to use or register the SPLENDA mark as part of a
domain name or otherwise.
Complainant contends that Respondent is not commonly known by the <splendacookbook.com>, <splendarecipes.com>, <splendarecipies.com> or <splendarecipeclub.com> domain
names or the SPLENDA mark. Respondent is
identified in the Whois Database as “PrePress Consultants” and “Greg Irvin.”
Complainant contends that Respondent has not commenced use of any of
the domain names despite owning the registrations for <splendacookbook.com>, <splendarecipes.com>
and <splendarecipies.com> for
well over two and a half years, and the registration for <splendarecipeclub.com> for over six months.
Complainant contends that when a mark is as well known as the SPLENDA
mark, there is a presumption that no one else has rights or legitimate
interests to it.
Complainant contends that Respondent has no realistic justification for
use of the <splendacookbook.com>,
<splendarecipes.com>, <splendarecipies.com> and <splendarecipeclub.com> domain
names and can present no fair use or non-commercial use of the same.
Because Reg. No. 1,544,079 – SPLENDA is incontestable, Complainant contends that it serves as
conclusive evidence of the validity of the SPLENDA mark, Complainant’s
ownership therein and Complainant’s exclusive right to use the mark in
connection with the goods identified thereby, namely, a non-caloric sugar
substitute and low calorie sweetening ingredient.
Complainant contends that its federal registrations and pending
application also serve as constructive notice to Respondent of Complainant’s
rights in the SPLENDA mark.
Moreover, given the asserted considerable length of time for which
Complainant has been using the SPLENDA mark, the fame that the SPLENDA mark has
acquired over the years and the widespread availability of Complainant’s
cookbooks and recipes, Complainant contends that it is inconceivable that
Respondent was unaware of Complainant’s mark.
Because Respondent was on notice of the famous SPLENDA mark,
Complainant contends that the registration of a domain name incorporating the
SPLENDA mark is, by itself, evidence of bad faith as required by the Policy.
Further, Complainant contends that Respondent’s
failure to use the domain names to identify active web sites for more than a
year constitutes passive holding and demonstrates bad faith use and
registration of the domain names under the Policy.
Complainant contends that bad faith is shown
where a respondent has continued to hold a domain name despite receiving a
cease and desist letter from a legitimate complainant. Here, Complainant contends that not only did
Respondent fail to respond to Complainant’s two cease and desist letters, but
it registered an additional domain name thereafter.
According to Complainant, Respondent’s warehousing of four domain names
incorporating Complainant’s famous SPLENDA mark also constitutes bad faith.
Complainant cites and discusses various cases in support of its
contentions.
B. Respondent
Respondent contends that Complainant has not
established that the domain names are identical or confusingly similar to any
mark in which is has rights.
Respondent contends that Complainant only claims rights to the “Splenda”
portion of the contested domain names. As asserted by Respondent, not all
similarities are confusing and the fact that a trademark is incorporated in a
domain name in its entirety does not ipso
facto mean that the domain name is confusingly similar to the
trademark. Similarity of the trademark
and the domain name depends on a number of factors, including the relative distinctiveness
of the trademark and non-trademark elements of the domain name, and “whether
the non-trademark elements detract from or contradict the function of the
trademark as an indication of origin.”
Respondent contends that for years,
Complainant has made a sugar substitute and used the mark to describe its sugar
substitute, which has unique properties that differentiate it from other sugar
substitutes. In support, Respondent
provides a web site comparing various sugar substitutes.
Respondent contends that Complainant
currently has no trademark in the area of cookbooks or cooking services and did
not even have any mark applications for such products or services pending at
the times that Respondent registered the domain names in dispute (approximately
2003 to 2004). However, on December 4, 2006, after the registration of the
disputed domain names, Respondent contends that Complainant submitted an
application for the mark SPLENDA in the category of “Printed publications,
namely books, magazines and pamphlets in the field of low calorie sweeteners,
recipes, cooking, baking, health information and weight management.” Respondent provides a USPTO record relating
to that application. Respondent contends
that at the time that the domain names were registered, the additional words
did not describe a good or service that the Complainant was marketing.
Respondent contends that it cannot be said that Respondent anticipated that
Complainant would make the move into that area or targeted Complainant’s mark
to create confusion. If anything, at the
time of registration, the words added by Respondent, distinguished it from the
actual goods sold under the mark and placed it squarely within the category of
cookbooks sold by third parties and currently available by Amazon. In the latter regard, Respondent submits a
page from Amazon’s Web site that shows numerous cookbooks whose titles include
“Splenda.”
Respondent contends that the addition of the
words in the disputed domain names clearly differentiates the domain names from
the trademark, as they existed at the time of registration and actually avoided
confusion by placing the names within the realm of fair use commentary.
Respondent contends that they are a married
couple named Greg and B.J. Irvin. According to Respondent, Greg is a diabetic
and B.J. began cooking with Splenda some years ago due to Greg’s medical
condition. Over the years, Respondent
contends that an informal club developed that exchanged recipes that dealt with
the challenges of cooking with Splenda.
Respondent contends that the club has a large number of members who
exchange recipes and other information regarding Splenda. In registering the domain names, Respondent contends
that the couple had a long term intent to post contest [sic] reflective of
those names, namely recipes and other information about cooking with Splenda in
order to assist other interested members of the public, such as diabetics or
those seeking to loose [sic] weight.
Respondent contends that the current content on the websites are posted
by the applicable registrars and not controlled by the Irvins. Respondent supports these contentions by a
declaration of B.J. Irvin and by seven other individuals who attest to
existence of the club and to the exchange of recipes.
Respondent contends that, as established by
the declarations, Respondent has been part of an information organization
loosely referred to as a Splenda recipe and cooking club. Respondent contends
that it has made demonstrable preparations to operate the website in support of
that group, by gathering recipes and has not done so for commercial gain to
divert consumers or tarnish the marks.
To the contrary, Respondent asserts that its efforts have encouraged
others to use the product sold under the SPLENDA mark in more diverse ways.
Respondent contends that it is permissible to use another’s mark if the
Respondent shows that the incorporation into the domain name is for legitimate
purposes. Providing information is a
legitimate purpose.
Respondent contends that in the
Given
the showing of nominative fair use and establishment of legitimate use of the
names to describe their organization and its goals, Respondent contends that
such is evidence that there is no bad faith evident on the part of
Respondents. Respondent contends that
Complainant has not proffered evidence that demonstrates that Respondent has
specifically intended to confuse consumers seeking out Complainant.
Respondent contends that it did not register the domain name to sell to
Complainant. Respondent contends that it has had no communication with
Complainant regarding sale and has never contacted Complainant.
Respondent contends that bad faith
registration cannot be found if the domain name was registered before
Complainant acquired trademark rights.
Respondent contends that while this is a subtle point in the instant case,
it does bear careful analysis. When
Respondents registered the domain names, Respondent contends that [Complainant]
was solely making a good, namely a sugar substitute with unique properties. In the last year, Respondent contends that
Complainant has applied for a broader use of the mark; however, that should not
be considered in this case. Respondent
contends that its supplied pages from the Amazon Web site show that a number of
writers and authors have addressed the issues involved in cooking or baking
with Splenda. Respondent contends that
in looking at the context at the time of registration and given their history,
Respondent cannot be found to have acted in bad faith in registering the
disputed domain names.
FINDINGS
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the statements made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the statements made by a respondent.
Without certification, a Panel may
choose not to consider any submission, even in the case of pro se parties.
In this case, Complainant and Respondent each have provided the required certification and their submissions have been admitted.
With certification, the Panel gives weight to those statements that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under ¶ 10(d) of the Rules.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a domain name should
be cancelled or transferred:
(i)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(ii)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the
domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has successfully
established rights in the SPLENDA mark under Policy ¶ 4(a)(i) through
possession of its U.S. Trademark Registration Nos. 1,544,079 and
2,581,278. The U.S. Trademark Act is clear that the
certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of
the registered mark and the registrant's exclusive right to use the mark in
commerce or in connection with the goods specified in the registration. 15
U.S.C. §1057 (b). See
Reebok Int’l Ltd. v.
Each of the
disputed domain names contain the SPLENDA mark in its entirety with the addition
of common words that have an obvious relationship to that mark, as
Complainant’s mark is used to market a sugar substitute. Additionally, the <splendarecipies.com> domain name contains a misspelled variation
of the word “recipe.” All of the
disputed domain names also add the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
addition of a gTLD is irrelevant to a Policy
¶ 4(a)(i) analysis, as a top-level domain is a requirement for all domain names. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the SPLENDA mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The fact that others use the SPLENDA mark as part of the titles of their cookbooks does not avoid confusing similarity. The Panel notes that few of the titles cited by Respondent in the page from Amazon use the SPLENDA mark in a trademark sense, i.e., as an adjective modifying a descriptive or generic term such as “cookbook” or “recipe.” Examples are “Fantastic Food with Splenda…”, “Marlene Koch’s Sensational Splenda Recipes…”, and “Unbelievable Desserts with Splenda….”
The Panel thus finds that Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Respondent had
notice of the dispute as of the effective date of Complainant’s U.S. Trademark
Registration No. 1,544,079, which far predated the earliest registration of the
domain names at issue. The U.S.
Trademark Act is clear that, once registration has occurred, the filing of the
application to register the mark is constructive use of the mark, giving a
nationwide right of priority on or in connection with the goods specified in
the registration, with certain exceptions not pertinent here. 15
U.S.C. § 1057(c). See Ideal Prods., LLC v.
In the opinion of the Panel, the
relationship between a sugar substitute (the goods in Complainant’s U.S.
Trademark Registrations) and recipes and cookbooks using a sugar substitute is
simply too close. It is common practice
for a merchant selling goods under a mark to expand use of that mark to related
goods, and believes that it would be difficult if not impossible for Respondent
on their own to register the domain names at issue as trademarks for recipes or
cookbooks. Further, Respondent by their
own admission were aware of the SPLENDA mark when they started planning for use
of their Web sites relating to recipes and cookbooks.
Respondent does not contend that they have been known by the domain names at issue.
The circumstances of ¶ 4(c)(i) and (ii) are thus inapplicable to this case.
Regarding the circumstances of 4(c)(iii), the Panel notes that three of the domain names at issue are used for Web sites that feature sponsored links to various recipes. The commercial nature of these links cannot be set aside, despite the contentions of Respondent that they have no control over the contents of these Web sites which are provided by Respondent’s domain name registrars. The Panel finds Respondent responsible for these links because it is Respondent that has authorized the registrars to use the domain names at issue. See Ideal Prods., LLC v.Manila Indus., Inc., supra (“Respondent cannot duck its responsibility for the site by saying that others choose the content.). See also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Regarding the remaining domain name that is not in use, no defense under Policy ¶ 4(c)(iii) is possible.
In addition, it is hard for the Panel to conclude that any use of the domain names at issue could qualify as fair use. As previously stated, each of the domain names constitutes a trademark use of the SPLENDA mark (e.g., “(mark)(name of goods)”) and not an informative use of the SPLENDA mark (e.g., “(name of goods) using (mark)”). Other panels facing similar circumstances have not found fair use. See Rival Co. v. DVO Enters., D2002-0265 (WIPO Aug. 2, 2002) (“although Respondent’s use of CROCKPOT in web page content itself might be nominative fair use, the use of the Domain Name [crockpotrecipes.net] involves a greater appropriation of Complainant’s mark than is reasonably necessary as a fair reference to Complainant.”).
The intent of Respondent in registering the domain names must be considered. Respondent’s contentions are found in its Response and in the supporting declaration of B.J. Irvin. Both include simple, unsubstantiated statements as to the intent to use the domain names at issue in the future for noncommercial web sites permitting the exchange of recipes using Splenda. This activity according to Respondent was to follow on the activity of an informal club of recipe exchange previously established by the Irvins. Although the declarations of other members of this informal club support the existence of the club, none support the intent of Respondent for the domain names at issue. Further, all of the declarations are of doubtful provenance. None includes anything more than a statement of an ultimate conclusion of fact and none provides any foundation for those conclusions. The Panel thus gives little weight to the asserted intent of Respondent.
The Panel thus finds that Complainant has met its burden of proof under ¶ 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy reads:
[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Complainant does not contend, and the Panel does not find, that any of the circumstances of Policy ¶ 4(b) are present. Rather, Complainant bases its case on the general language of Policy ¶ 4(a)(iii).
As with other elements of the Policy, proof of this element generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Lack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).
One contention made by Complainant is based on Respondent’s passive holding of the domain names at issue. Yet, Complainant has also contended and established that three of the domain names are in use and contain sponsored links to Web sites related to recipes and cookbooks. Complainant cannot have it both ways – the acts that establish lack of legitimate interest in this case demonstrate that passive holding is not present.
Another contention made by Complainant is based on Respondent’s warehousing of the domain names at issue. Yet, only one of those domain names is not in use and Complainant has failed to establish warehousing.
Regarding both passive holding and warehousing, the numerous cases cited by Complainant are inapposite. In all of those cases, the respondent either made no response or did not deny bad faith.
Yet another contention made by
Complainant is based on Respondent’s continued holding of three of the domain
names at issue after receiving a cease and desist letter, and on Respondent’s
subsequent registration of the remaining one of the domain names. More facts are needed, as was the situation
in the case cited by Complainant, Minn.
Mining & Manuf. v. JonLR, D2001-0428 (WIPO May 30, 2001), to support a
finding of bad faith in the circumstances of the present case.
The most significant contention made by Complainant is based on the famous nature of the SPLENDA mark (because the mark is famous, registration and use must have been in bad faith).
Complainant’s proofs regarding the famous nature of the SPLENDA mark are meager. All that Complainant supplies are general statements without any substantiation in its Complaint, and a copy of its Web site. Respondent contests the famous nature of the SPLENDA mark. But, the evidence supplied by Respondent (i.e., the page from Amazon) shows that many different authors recognize the SPLENDA mark. This fact overrides the factual contentions of Respondent based on the declarations of B.J. Irvin and various others that have been given little weight by the Panel. The Respondent also discusses the pending application for U.S. Trademark Registration of the SPLENDA mark. The exact status of this application is unknown to the Panel, which notes that Complainant has not submitted a copy of the application or any other evidence of use of the SPLENDA mark for the goods in the application. In any event, the application is irrelevant to a determination of whether or not the SPLENDA mark is famous.
The Panel takes notice that advertising and marketing for products identified with the SPLENDA mark has been widespread, continuous and prolific in various media. Although the Panel is constrained by the Rules to decide the case “on the statements and documents” submitted, the Panel finds that Complainant has established a prima facie case that has been supported by and not overcome by the submissions submitted by Respondent. The Panel thus finds that the SPLENDA mark is famous. Given that fame, it is inconceivable to the Panel that the Respondent was acting in good faith in adopting domain names so close to that mark.
The Panel thus finds that the Complainant has met its burden of proof under
¶ 4(a)(iii) of the Policy.
DECISION
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 <splendacookbook.com>, <splendarecipes.com>,
<splendarecipies.com> and <splendarecipeclub.com>
domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: September 11, 2007
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