Hormel Foods Corporation, Hormel Foods Sales, LLC, and Hormel Foods, LLC v. [REDACTED]
Claim Number: FA1403001547443
Complainant is Hormel Foods Corporation, Hormel Foods Sales, LLC, and Hormel Foods, LLC (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent’s identity has been redacted pursuant to Policy ¶ 4(j).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hormelfood.org>, registered with eNom, Inc. (R39-LROR).
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 10, 2014.
On March 7, 2014, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <hormelfood.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the names. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 March 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@hormelfood.org. Also on March 12, 2014, 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.
A timely Response was received and determined to be complete on March 20, 2014.
On March 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Preliminary Issue: Multiple Complainants
The three Complainants in this matter are Hormel Foods Corporation, Hormel Foods Sales, LLC, and Hormel Foods, LLC. Hormel Foods Corporation is a multinational manufacturer of meat and food products, including products bearing the HORMEL trademark. Hormel Food Sales, LLC markets and sells products produced by Hormel Foods Corporation, and Hormel Foods, LLC owns and licenses trademarks related to goods sold by Hormel Foods Sales, LLC, including the HORMEL trademark. These three companies collectively produce, market, and promote products under the HORMEL trademark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complaints, and will treat them all as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Redaction of Respondent’s Identity
Respondent contends that it has been the victim of identity theft. Respondent claims that its credit card was compromised in the recent identity theft and credit card theft crisis in December 2013. Respondent claims that it took some time to straighten out these issues, and that it did not register any domain names. Further, Respondent shows a clear disinterest in this case as Respondent desires to see the disputed domain name transferred to Complainant. The Panel finds Respondent is a victim of identity theft, and will redact Respondent’s personal information from the decision to prevent the further victimization of Respondent. In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Consequently, the Panel determines the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s personal information from the Panel’s decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
a) Complainant is a multinational manufacturer and marketer of meat and foods products and has been in business since 1891. Complainant owns over sixty domain names incorporating the HORMEL mark, including its primary websites located at <hormel.com> and <hormelfoods.com>.
b) Complainant has rights in the HORMEL, used in connection with the manufacture and sale of meat and food products. Complainant owns registrations for the HORMEL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,012,381 registered June 3, 1975).
c) Respondent’s <hormelfood.org> domain name is confusingly similar to Complainant’s HORMEL mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “food” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <hormelfood.org> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HORMEL mark in any way.
b. The <hormelfood.org> domain name is connected to an e-mail address from which Respondent is posting fictitious job openings on <craigslist.com> as well as other employment websites. Consumers replying to the fake postings are directed to individuals purporting to be a Vice President of Human Resources for Complainant. Complainant believes Respondent has set up this scheme in an effort to phish for Internet users’ personal and financial information.
c. By purporting to be a human resources representative of Complainant, Respondent is attempting to pass itself off as Complainant.
e) Respondent registered and is using the <hormelfood.org> domain name in bad faith.
a. Respondent is using the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainant’s HORMEL mark for Respondent’s own financial gain. Respondent is attempting to pass itself off as Complainant to obtain financial gain by purporting to be a representative of Complainant offering job opportunities via online employment websites.
b. Respondent is attempting to pass itself off as Complainant by purporting to be a representative of Complainant offering job opportunities via online employment websites.
c. Respondent had knowledge of Complainant’s HORMEL mark prior to registering the <hormelfood.org> domain name, which is evidenced by Respondent’s scheme in which it purports to be a representative of Complainant.
B. Respondent
Respondent’s credit cards were compromised in December 2013, and Respondent believes whoever stole her credit card information likely registered the <hormelfood.org> domain name. Respondent is willing to transfer ownership of the disputed domain name to Complainant.
Respondent consents to transfer the <hormelfood.org> domain name to Complainant. Respondent claims that she did not actually register this domain name and her identity is being used by an unknown third-party to register domain names. The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel will decide to forego the traditional UDRP analysis and order an immediate transfer of the <hormelfood.org> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
This Panel finds that it is the clear intention of the Respondent that the disputed domain name be immediately transferred from Respondent to Complainant. For that reason, there is no need to discuss the application of the Policy.
Accordingly, it is ORDERED that the <hormelfood.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 7, 2014
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