Hormel Food Corporation and Hormel Foods
LLC v. A. Keaveny
Claim Number: FA0205000114412
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 A. Keaveny, Leeds, West Yorks, UNITED KINGDOM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <spamoftheday.com>,
registered with Register.com.
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.
PROCEDURAL HISTORY
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 24, 2002.
On
May 28, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <spamoftheday.com> is registered
with Register.com and that Respondent is the current registrant of the
name. Register.com has verified that
Respondent is bound by the Register.com 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@spamoftheday.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 <spamoftheday.com>
domain name is confusingly similar to Complainant’s registered SPAM family of
marks.
2. Respondent has no rights or legitimate
interests in the <spamoftheday.com> domain name.
3. Respondent registered and used <spamoftheday.com>
in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant owns numerous trademark
registrations for its SPAM mark, including: U.S. Trademark Reg. No. 529,294 for
SPAM registered August 22, 1950 and United Kingdom Trademark Reg. No. 602,660
for SPAM registered on November 25, 1938, among others. Complainant also
maintains two websites dedicated exclusively to its SPAM product, namely,
<spam.com> and <spam-uk.com>.
Complainant is a multinational
manufacturer 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. In 1999 alone, Complainant’s sales and advertising in the United
Kingdom totaled $475,000; in 2000 $568,400; and in 2001 $505,000.
Complainant’s SPAM mark is a distinctive,
internationally recognized trademark. Complainant has sold over five billion
cans of luncheon meat under the SPAM mark and invested millions of dollars in
advertising. As a result, Complainant has a 75% share of the canned meat market
and Complainant’s SPAM product is eaten in 30% of all American homes.
Respondent registered the disputed domain
name on May 20, 2000. Complainant’s investigation revealed that Respondent
previously used the disputed domain name to redirect Internet users to
pornographic websites located at <porn.co.uk> and <phonesex.co.uk>.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
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 established its rights in the
SPAM mark through worldwide registration and continuous use of the mark since
1937.
Respondent’s disputed domain name incorporates
Complainant’s entire SPAM mark. The addition of various generic terms in the
second level domain does not detract from the dominating presence of
Complainant’s SPAM mark. Internet users will likely believe an affiliation
exists between Respondent’s website and Complainant’s product. See Prudential Ins. Co. of Am. v. Irvine, FA
95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical
to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name,
namely the word "Prudential," is identical to Complainant’s
mark…thus, the domain name in its entirety is confusingly similar to
Complainant’s family of marks); see also Oki Data Americas, Inc. v. ASD
Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates
a Complainant’s registered mark is sufficient to establish identical or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent failed to submit a Response in
this proceeding. 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 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”).
Respondent’s primary purpose in
registering and using the domain name is to tarnish Complainant’s mark and to
misleadingly divert web traffic intended for Complainant’s website to
Respondent’s pornographic website. Respondent is commercially benefiting from
the goodwill associated with Complainant’s established mark. Respondent is not
making a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii) and Respondent’s domain name is not connected to a bona fide
offering of goods or services under 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 Complainant’s mark); see also 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).
No evidence suggests that Respondent is commonly known by
the <spamoftheday.com> domain name, or a corresponding
“SPAMOFTHEDAY” moniker. The fame and recognition associated with Complainant’s
established SPAM mark creates a presumption that Respondent has no rights or
legitimate interests in the SPAM mark pursuant to Policy ¶ 4(c)(ii). 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 CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Complainant
has been continually using its SPAM mark to identify its unique luncheon
product since 1937 and Complainant holds as many as 101 trademark registrations
for its SPAM family of marks. Therefore, because of Complainant’s extensive development of its mark, the SPAM mark
has become distinct and famous. Due to the mark’s fame and Complainant’s
registration of the SPAM mark in the United Kingdom, Respondent’s domicile,
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 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); 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).
Respondent’s
registration of an infringing domain name with the intention of directing
Internet users to pornographic websites 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 to its own
pornographic websites 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 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 <spamoftheday.com>
domain name be TRANSFERRED from Respondent
to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 25, 2002.
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