Kellogg North America Company v. 21562719 Ont Ltd
Claim Number: FA1312001534092
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chocokrispis.com>, registered with Fabulous.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 11, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <chocokrispis.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 December 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@chocokrispis.com. Also on December 13, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Kellogg North America Company, is a multinational food manufacturing company founded in 1906 and with current annual sales in excess of $13 billion. Complainant sells breakfast foods, snacks, frozen foods, and beverages in more than 180 countries.
Complainant is the owner of trademark registrations with the Instituto Mexicano de la Propiedad Industrial (“IMPI”) for the CHOCO KRISPIS mark (e.g., Reg. No. 276,285, registered June 23, 1982). Complainant is also the owner of trademark registrations with the Office for Harmonization in the Internal Market (“OHIM”) for the CHOCO KRISPIS mark (e.g., Reg. No. 000656330, registered August 27, 2001).
Respondent’s <chocokrispis.com> domain name is identical to Complainant’s CHOCO KRISPIS mark. The addition of “.com” to CHOCO KRISPIS does not create a level of distinctiveness that would overcome a finding of confusing similarity.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent has not been commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites. Presumably, Respondent receives pay-per-click fees from these linked websites.
The domain name should be considered as having been registered and being used in bad faith. Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks or other entities in order to capitalize on the goodwill developed by others. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process. Respondent, at the time of registration of the disputed domain name, knew, or at least should have known, of the existence of Complainant’s trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the IMPI as well as the OHIM for its CHOCO KRISPIS mark.
Respondent is not authorized to use the CHOCO KRISPIS mark.
Respondent registered the at-issue domain name subsequent to when Complainant acquired rights in the CHOCO KRISPIS mark.
Respondent uses the domain name to address a website featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the CHOCO KRISPIS mark pursuant to Policy ¶ 4(a)(i) by virtue of its owning a relevant trademark registration with either the IMPI or OHIM. It is irrelevant that Respondent may operate outside of the trademark registrants’ jurisdiction. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also, Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s appending of the generic top-level domain, ”com,” to CHOCO KRISPIS, with its space omitted, does not distinguish the <chocokrisis.com> domain name from the Complainant’s trademark for the purposes of the Policy. Therefore the Panel concludes that the at-issue domain name is identical to Complainant’s trademark under Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “21562719 Ont Ltd.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <chocokrispis.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <chocokrispis.com> domain name to redirect Internet users to a website featuring generic links to third-party websites. The hyperlink directory features links titled “The new Nexus 7,” “Reading Health System,” “Online Marketing Degrees,” and others from which Respondent presumably receives pay-per-click fees. Respondent’s use of a domain name to link to unrelated hyperlinks is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks or other entities in order to capitalize on the goodwill developed by others. Respondent is the losing party in no less than 16 UDRP cases since 2010. See Homer TLC, Inc. v. 21562719 Ont Ltd, FA 1526817 (Nat. Arb. Forum Dec. 4, 2013); see also Getty Images (US), Inc., and its subsidiary, Istockphoto LP v. 21562719 Ont Ltd, FA 1521952 (Nat. Arb. Forum Nov. 12, 2013); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. 21562719 Ont Ltd, FA 1483550 (Nat. Arb. Forum Mar. 12, 2013). Respondent’s prior adverse UDRP decisions suggest Respondent’s bad faith in the instant proceedings regarding the <chocokrispis.com> domain name pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Furthermore and as mentioned above, Respondent is using the <chocokrispis.com> domain name to redirect Internet users to a website featuring advertising links to third-party websites, and likely receiving pay-per-click fees in the process. Such use of the identical domain name misleads and diverts consumers from Complainant’s website and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, Respondent had knowledge of Complainant’s rights in the CHOCO KRISPIS mark when it registered the <chocokrispis.com> domain name. Complainant’s mark is unique and performing even a simple “Google” search for the term CHOCO KRISPIS shows links to a number of Complainant’s websites. It would be inconceivable that Respondent could have come up with the domain name without knowledge of Complainant and its trademark. .Therefore, Respondent’s prior knowledge of Complainant's trademark additionally shows that Respondent registered the at-domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chocokrispis.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 15, 2014
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