Hormel Foods Corporation and Hormel Foods
LLC v. Global Media Resources SA
Claim Number: FA0205000114411
PARTIES
Complainants
are Hormel Foods Corporation and Hormel Foods, LLC, Austin, MN, USA (hereinafter collectively,
“Complainant”) represented by Linda M.
Byrne of Merchant & Gould P.C.
Respondent is Global Media Resources SA,
Toronto, ON, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <spamhammer.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 23, 2002; the Forum received a hard copy of the Complaint
on May 28, 2002.
On
May 24, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <spamhammer.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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”).
On
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 17,
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 postmaster@spamhammer.com 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
July 11, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. Respondent’s <spamhammer.com> domain
name is confusingly similar to Complainant’s registered SPAM family of marks.
2. Respondent has no rights or legitimate
interests in the <spamhammer.com> domain name.
3. Respondent registered and used <spamhammer.com>
in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant is a multinational
manufacturer and marketer of meat and food products and has been in operation
since 1891. Complainant has been using the SPAM mark in connection with its
business since at least 1937. Complainant also has a website devoted exclusively
to SPAM located at <spam.com>.
Complainant is the owner of numerous U.S.
Patent and Trademark Office registrations, including: Reg No. 529,294 for the
SPAM mark first used in May of 1937; Reg. No. 2,059,462 for the SPAMARAMA mark
first used in April of 1978; and, Reg. No. 2,478,066 for the SPAMTASTIC mark
first used in October of 1997. Complainant also holds a Canadian trademark
registration, more specifically, Reg. No. UCA46116, registered on March 9,
1998. Complainant owns as many as 101 registrations for the SPAM mark
worldwide.
Complainant’s SPAM is a distinctive,
widely recognized trademark. Complainant has sold over five billion cans of
luncheon meat under the SPAM mark and has invested millions of dollars in
advertising to promote SPAM products. As a result, Complainant has a 75% share
of the canned meat market in the world and Complainant’s SPAM product
reportedly is eaten in 30% of all American homes.
Respondent registered the disputed domain
name on January 18, 1999. Respondent has used the domain name in connection
with a pornographic website located at <hardcontact.com>. Respondent’s
website uses the mousetrapping technique whereby Internet users are continually
confronted with newly emerging pornographic websites despite closing the website
browser window.
DISCUSSION
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
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
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 has established in this
proceeding that it has rights in the SPAM family of marks through worldwide
registration and by Complainant’s continuous use of the mark since 1937.
The domain name registered by Respondent,
<spamhammer.com>, is confusingly similar to Complainant’s SPAM
family of marks. Respondent’s infringing domain name incorporates Complainant’s
entire mark. The secondary domain name deviates from Complainant’s SPAM mark
only by addition of the generic word “hammer.” The addition of a generic word
fails to detract from the overall impression of the domain name and presence of
Complainant’s SPAM mark. 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 Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word…nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has established its rights to
and legitimate interests in the SPAM mark in this proceeding. Respondent has not submitted a Response in
this matter. Therefore, the Panel may presume that Respondent has no rights or
legitimate interests in respect of 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). Furthermore, Respondent’s failure to respond allows all
reasonable inferences made by Complainant to be deemed true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing,
Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
Respondent benefits commercially from the
goodwill associated with Complainant’s SPAM family of marks by diverting
Internet users who are seeking Complainant’s goods and services to pornographic
websites that tarnish Complainant’s reputation. Respondent’s actions do not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and Respondent is not making a
legitimate noncommercial or fair use of the domain name under 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 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).
No evidence suggests that Respondent is
commonly known as “SPAMHAMMER” or <spamhammer.com> pursuant to
Policy ¶ 4(c)(ii). In fact, the fame associated with Complainant’s SPAM family
of marks creates a presumption that Respondent is not known by the SPAM
moniker. See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Nike, Inc.
v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Complainant
holds as many as 101 registrations for the SPAM mark worldwide, including
Respondent’s domicile, Canada. Furthermore, Complainant’s SPAM family of marks
has been extensively used since 1937 and enjoys international recognition. Because
of the fame associated with Complainant’s SPAM marks, Respondent had notice of
Complainant’s rights when registering the disputed domain name. Respondent’s
registration and use of the disputed domain name, despite knowledge of
Complainant’s preexisting rights, evidences bad faith pursuant to Policy ¶
4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the world-wide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Respondent’s registration of a confusingly similar
domain name, which incorporates Complainant’s famous mark with the intention of
rerouting Internet users to a pornographic website constitutes bad faith
pursuant to Policy ¶ 4(b)(iv). Respondent is attempting to attract, for
commercial gain, Internet users who are searching for Complainant’s products by
creating confusion as to the source of the domain name. See 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); see
also 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 Land O' Lakes Inc. v. Offbeat Media Inc.,
FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶
4(b)(iv) where Respondent utilized a domain name confusingly similar to the
Complainant’s mark and used a confusingly similar pornographic depiction of the
Complainant’s registered trademark on its web site to cause confusion as to the
source or affiliation of the site).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the requested relief should be
hereby GRANTED.
Accordingly, it is Ordered that the <spamhammer.com> domain name be
TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 24, 2002.
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