Hormel Foods Corporation, Hormel Foods, Sales, LLC, and Hormel Foods, LLC v. Timmy Smith
Claim Number: FA1110001410180
Complainant is Hormel Foods Corporation, Hormel Foods Sales, LLC, and Hormel Foods, LLC (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Timmy Smith (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hormelfoodsusa.com> and <hormelfoodscareers.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2011; the National Arbitration Forum received payment on October 5, 2011.
On October 5, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 October 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2011 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@hormelfoodsusa.com and postmaster@hormelfoodscareers.com. Also on October 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names are confusingly similar to Complainant’s HORMEL mark.
2. Respondent does not have any rights or legitimate interests in the <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names.
3. Respondent registered and used the <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hormel Foods Corporation, is a multinational manufacturer and marketer of meat and food products. Complainant, Hormel Foods, Sales, LLC, markets and sells the products produced by Complainant, Hormel Foods Corporation. Complainant, Hormel Foods, LLC, owns and licenses the trademarks related to the goods sold by Complainant, Hormel Food Sales, LLC, including the HORMEL mark. As the relationship between the three Complainants is adequate to establish a sufficient nexus or link between the Complainants, the Panel will treat Complainants as a single entity and allow them to the bring this Complaint jointly. Complainants will collectively be referred to as “Complainant” throughout the remainder of this decision. Complainant claims rights in the HORMEL mark based on its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,013, 611 registered June 17, 1975).
Respondent, Timmy Smith, registered the <hormelfoodsusa.com> domain name on September 14, 2011 and the <hormelfoodscareers.com> domain name on September 26, 2011. Respondent is using the disputed domain names as part of phishing scheme, whereby fictitious job postings are listed in order to phish for Internet users’ personal and financial information.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant claims rights in the HORMEL mark under Policy ¶ 4(a)(i). Past panels have determined that registration of a mark with a federal trademark authority is sufficient to confer rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has provided evidence of its registrations of the HORMEL mark with the USPTO (e.g. Reg. No. 1,013, 611 registered June 17, 1975). The Panel concludes that this is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant also asserts that the disputed domain names are confusingly similar to Complainant’s HORMEL mark under Policy ¶ 4(a)(i). Each domain name wholly incorporates Complainant’s mark, adding one or more of the following: the descriptive term “foods,” the generic term “careers,” and/or the geographic abbreviation “USA.” The Panel holds that these added terms cannot serve to distinguish the disputed domain names, as “foods,” USA,” and “careers” all refer to Complainant’s business. 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). Coupling Complainant’s mark with these terms falsely implies some affiliation with Complainant, rendering the disputed domain names confusingly similar under Policy ¶ 4(a)(i). See Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business). Additionally, the affixation of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that Respondent’s disputed domain names are confusingly similar to Complainant’s HORMEL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It is now well established that Complainant shoulders the initial burden of presenting a prima facie case. Once this burden has been satisfied, as is the case here, the burden shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Some Panels have concluded that a Respondent’s failure to submit a Response is per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). In the interest of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names for the purposes of Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the domain name registrant “Timmy Smith,” which the Panel finds bears no resemblance to either disputed domain name. This WHOIS record provides evidence that Respondent is not commonly known by the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant also indicates that it did not authorize Respondent to register either confusingly similar domain name. Without a Response, and absent any contrary evidence in the record, the Panel must hold that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further alleges that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain names are being used as part of phishing scheme, whereby fictitious job postings are listed in order to phish for Internet users’ personal and financial information. Previous panels have agreed that such schemes cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)). The Panel concludes that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s registration and use of the disputed domain names represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel infers that Respondent seeks to realize some sort of financial gain through the operation of its phishing scheme. It attempts to draw Internet users to its phishing website through the use of the confusingly similar domain names. In this way, Respondent hopes to realize a financial gain from the confusion it creates. The Panel finds that registration and use of the disputed domain names for this purpose represents bad faith as attraction for commercial gain under Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant’s commercial gain argument notwithstanding, past panels have found bad faith based on the mere presence of a phishing operation. Respondent’s actions in the immediate case undoubtedly constitute phishing. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel thus concludes that Respondent’s phishing activities at the disputed domain name reveal bad faith registration and use under Policy ¶ 4(a)(iii).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <hormelfoodsusa.com> and <hormelfoodscareers.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 17, 2011
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