Kellogg North America Company v. Private Registration
Claim Number: FA1504001613347
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Private Registration (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kelloggs.xyz>, registered with Crazy Domains FZ - LLC.
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 Forum electronically on April 7, 2015; the Forum received payment on April 6, 2015.
On April 8, 2015, Crazy Domains FZ - LLC confirmed by e-mail to the Forum that the <kelloggs.xyz> domain name is registered with Crazy Domains FZ - LLC and that Respondent is the current registrant of the name. Crazy Domains FZ - LLC has verified that Respondent is bound by the Crazy Domains FZ - LLC 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 April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2015 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@kelloggs.xyz. Also on April 8, 2015, 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.
On April 9, 2015 the Forum received an email from Respondent which was not a proper response to the Complaint.
Having received no proper response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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.
Complainant
Complainant has rights in the KELLOGG’S mark through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 115,348, registered February 5, 1916.) Respondent’s disputed <kelloggs.xyz> domain name is identical to Complainant’s KELLOGG’S mark. Respondent’s disputed domain name includes Complainant’s whole mark minus the apostrophe after the second “g” and includes the generic top-level domain name (“gTLD”) “xyz.”
Respondent has not been commonly known by the disputed <kelloggs.xyz> domain name. WHOIS information indicates that the Registrant is listed as “Private Registration” which does not resemble the disputed domain name. Respondent is not affiliated with Complainant and has not received any authorization to use Complainant’s KELLOGG’S mark in any manner. Respondent’s failure to use the <kelloggs.xyz> domain demonstrates a lack of rights or legitimate interests in the disputed domain name.
Respondent’s passive holding of the disputed domain name can be considered bad faith use. Respondent, at the time of registration, knew or should have known of Complainant’s rights in the KELLOGG’S mark. In disregarding those rights through the registration of the disputed <kelloggs.xyz> domain name Respondent acted in bad faith.
Respondent
Respondent did not submit a proper Response in this proceeding. On April 9, 2015 Respondent emailed the Forum offering Complainant the disputed domain name at no cost if it is found that the disputed domain name infringed on Complainant’s mark. Respondent argued that Kelloggs is a name for a person and that other domain names incorporating the word “Kelloggs” do not belong to Complainant.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant states that it has rights in the KELLOGG’S mark through registration of the mark with multiple trademark agencies including the USPTO (Reg. No. 115,348, registered February 5, 1916.) Past panels have consistently held that a complainant adequately demonstrates its rights in a mark through USPTO registration. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). As such, the Panel finds Complainant has rights in the KELLOGG’S mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed <kelloggs.xyz> domain name is identical to Complainant’s KELLOGG’S mark. Respondent’s disputed domain name includes Complainant’s whole KELLOGG’S mark minus the apostrophe and includes the gTLD “.xyz.” Panels have held that the use of punctuation in combination with a mark is not relevant to an analysis of the similarity between a mark and a disputed domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Panels have also disregarded the presence of gTLDs when determining that a disputed domain name and a mark are identical or confusingly similar. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <kelloggs.xyz> domain name is identical to Complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <kelloggs.xyz> domain name. The WHOIS information indicates that the registrant is listed as “Private Registration” which does not resemble the disputed domain name. The Forum contacted Respondent at btab23@gmail.com where Respondent’s email signature listed Respondent’s name as “Doreen C.” Past panels have held that a respondent is not commonly known by a disputed domain name where there is no evidence on the record to suggest that a respondent is known by the domain name, including the WHOIS record. 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed <kelloggsxyz.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s failure to make active use of the <kelloggs.xyz> domain demonstrates a lack of rights or legitimate interests in the disputed domain name. The webpage that resolves when accessing <kelloggs.xyz> is a generic parked webpage. Panels have held that failing to make use of a disputed domain name is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). In its email to the Forum, Respondent did not claim any rights or legitimate interest in the disputed domain name and did not state any intent to use the domain name. The Panel therefore holds that Respondent’s failure to use the disputed <kelloggsxyz.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant has proven this element.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent’s passive holding of the disputed domain name can be considered bad faith. Respondent’s disputed domain name resolves to a webpage parked by <crazydomains.com>. Past panels have held that passive use of a disputed domain name constitutes bad faith when a respondent fails to make an assertion of good faith intent to use the domain name. See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”). The Panel therefore, finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that its trademark registrations for the KELLOGG’S mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had at least constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <kelloggs.xyz> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 2, 2015
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