Kellogg North America Company v. Giovanni Laporta / Yoyo.Email
Claim Number: FA1504001614324
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Giovanni Laporta / yoyo.email (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kelloggs.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email>, registered with Godaddy LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 13, 2015.
On April 14, 2015, Godaddy LLC confirmed by e-mail to the Forum that the <kelloggs.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email> domain names are registered with Godaddy LLC and that Respondent is the current registrant of the names. Godaddy LLC has verified that Respondent is bound by the Godaddy 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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.email, postmaster@pringles.email, postmaster@specialk.email, postmaster@allbran.email, postmaster@vector.email. Also on April 20, 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.
A timely Response was received and determined to be complete on May 11, 2015.
Complainant’s additional submission was received and determined to be complete on May 15, 2015.
Respondent’s additional submission was received and determined to be complete on May 15, 2015.
On May 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonas Gulliksson 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has mainly stated the following.
Complainant uses the KELLOGG’S, PRINGLES, SPECIAL K, ALL-BRAN, and VECTOR marks (“KELLOG’S marks”) in connection with its manufacture and sale of breakfast foods, snacks, frozen foods, and beverages. Complainant has registered the marks with the likes of the United States Patent and Trademark Office (“USPTO”) and/or the Canadian Intellectual Property Office (“CIPO”). The following list enumerates examples of the earliest registration numbers and dates provided for each mark:
(a) KELLOGG’S, U.S. trademark Reg. No. 115,348, Registered February 6, 1917;
(b) PRINGLES, U.S. trademark Reg. No. 916,415, Registered July 13, 1971;
(c) SPECIAL K, U.S. trademark Reg. No. 625,578, Registered April 17, 1956;
(d) ALL-BRAN, U.S. trademark Reg. No. 964,779, Registered July 24, 1973; and
(e) VECTOR, CIPO Reg. No. TMA582897, Registered June 2, 2003.
Respondent’s <kelloggs.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email> are identical to Complainant’s marks as they incorporate the marks in their entirety and merely eliminate spacing or hyphenation, as well as affixing the generic top-level domain (“gTLD”) “.email” to the end of each mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the <kelloggs.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email> domain names, nor has Complainant given Respondent authorization or permission to use its marks in the registration of domain names. Further, Respondent is not making a bona fide offering of goods or services, or any legitimate noncommercial or fair use through the disputed domain names. Rather, Respondent seeks to incorporate the disputed domain names in a service to Internet users for recorded delivery of email and/or an email reply monitoring system, with each driven by a neutral communication platform. Each disputed domain name fails to resolve to an active website, demonstrating Respondent’s failure to make an active use. Respondent has been involved in many prior UDRP decisions in which his business model has been considered as non-legitimate under the Policy.
Respondent has registered and used the disputed domain names in bad faith. Respondent has prior registered many famous trademarks in domain names, which has been considered as evidencing serial cybersquatting behavior under the Policy. Next, Respondent has admitted to have attempted to attract Internet users to profit off the likelihood of confusion associated with the source, sponsorship or affiliation with Complainant and its marks under Policy. Additionally, Respondent’s inactive holding of the disputed domain names evinces bad faith under Policy. Finally, Respondent had actual and/or constructive knowledge of Complainant’s marks and the rights therein because of the fame associated with the marks.
B. Respondent
Respondent has mainly stated the following.
A declaratory judgment issued by the U.S. District Court of Arizona has stated that his registering of a “.email” domain name was not violating the UDRP.
Respondent uses words that happen to be trademarks for their non-trademark value.
Respondent has rights and legitimate interests under Policy because it has a legitimate noncommercial and fair business model by providing free use of its domains and limiting the use of the domain name to route and capture email meta data with no intent to profit from Complainant. Respondent has also filed a CTM trademark for YOYO. Respondent’s <vector.email> domain name consists of generic terms.
Respondent registered the disputed domain names in good faith. Complainant has failed to establish that Respondent has acted in bad faith. Respondent has prior declined offers to sell his domain names. Complainant was given the exclusive possibility to opt to purchase and register domain names matching its trademarks, but no registration was made. The intention of the “Sunrise Period” must constitute that all nonregistered domain names can thereafter go out on general sale. The disputed domain names have been registered by Respondent after the “Sunrise Period”, and thus concludes Respondent’s good faith. Respondent’s <vector.email> domain name consists of generic terms.
C. Additional Submissions
Complainant
Complainant has mainly stated the following.
The value of the marks that make up the disputed domain names is solely in their status as world famous trademarks and Respondent would not have chosen to register domain names which incorporate such marks had they not been famous. Respondent’s use of famous trademarks in his domain names is unnecessary for his purported business purposes.
Respondent
Respondent has mainly stated the following.
Complainant has attempted reverse domain name hijacking by bringing this claim against Respondent.
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.
Respondent has devoted argumentation to the effect of the declaratory judgment issued by the United States District Court of Arizona. The Panel finds the declaratory judgment to be irrelevant for this proceeding, since the judgment results from a motion consensually filed by both sides to the underlying action, Complainant was not party to the action, and on the basis that UDRP cases are strictly confined to be assessed under the UDRP and not under any national/local acts.
The Panel has taken all case submissions into consideration.
Complainant is the holder of several registered trademarks involving KELLOGG’S, PRINGLES, SPECIAL K, ALL-BRAN and VECTOR. The disputed domain names <kelloggs.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email> consist of Complainant’s trademarks in their entirety with minor differences, such as no punctuation mark, no spacing, no hyphenation, and with the addition of the gTLD “.email”. According to the well established consensus among panels, the gTLD is generally not distinguishing. The Panel finds that the disputed domain names <pringles.email> and <vector.email> are identical to Complainant’s relevant trademarks, and the disputed domain names <kelloggs.email>, <specialk.email>, and <allbran.email> must in an overall impression be considered as confusingly similar to Complainant’s relevant trademarks.
Consequently, the Panel finds the disputed domain names to be identical or confusingly similar to the KELLOGG’S marks in which the Complainant has rights. The first element of ¶ 4(a)(i) of the Policy is thus fulfilled for all the disputed domain names.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, and then the burden shifts to Respondent to show he does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug Aug. 18, 2006).
Complainant has asserted that no permission has been granted to Respondent to register or use the disputed domain names, and Respondent has no rights of its own or legitimate interests in the disputed domain names. Moreover, Respondent is not commonly known by the disputed domain names or has not acquired any related trademark rights. This last assertion has not been rebutted by Respondent.
To the contrary, Respondent has mainly stated that the disputed domain name is registered and used in a legitimate way and to be a bona fide offering type of business. Respondent has also stated the following. The purpose for the acquisition of all “.email” domain names is to offer an independent email service that without costs register emails from the sender to the receiver. For this purpose, Respondent has filed a trademark application for YOYO. In addition, there is no intent to profit from Complainant. The disputed domain <vector.email> is a common and generic/descriptive term and Complainant has therefore no exclusive right in the term on the Internet. As a consequence, Respondent can establish rights or legitimate interests in this disputed domain name.
The Panel finds Respondent’s business to be considered as commercial business. The Panel also notes that Respondent has given no explanations of why third-party trademarks have been included in the disputed domain names under Respondent’s business model. Even though Respondent assures that no payments will be required by the users for the service, the Panel agrees with consented assessment of other panelists and finds Respondent’s business model – that requires the unauthorized use of unrelated domain names containing third party trademarks – cannot be considered legitimate under the Policy. See, inter alia, 02 Holdings Limited. v. Yoyo.email/Giovanni Laporta (WIPO Case No. D2014-1399). The use of Complainant’s trademarks by a third party may most likely cause confusion as to the commercial origin of the service. The Panel notes that Respondent has registered many domain names with well-known trademarks, most certainly to be used in the business model. The Panel finds that the registration of a domain name identical or confusingly similar to a trademark is not sufficient to establish rights or legitimate interests for Respondent based on the purpose of the Policy. The Panel finds these patterns to be considered as interruptions of Complainant’s business and they cannot therefore be considered as a fair use of the disputed domain names. In addition, the Panel does not find any indications that Respondent is making a legitimate noncommercial use of the domain names. Nor is Respondent connected or authorized to use Complainant’s trademarks in the disputed domain name. Having considered all the circumstances of the case, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has presented any contrary evidence.
In accordance with the findings above the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name in the meaning of the Policy ¶ 4(a)(ii), and the second element of the Policy is thus fulfilled.
Complainant has mainly alleged that Respondent has been involved in many prior UDRP decisions which evidence cybersquatting. Respondent has also attempted to attract Internet users to profit off the likelihood of confusion associated with the source, sponsorship or affiliation with Complainant and its marks. Additionally, Respondent is inactively holding the disputed domain names, and had actual or at least constructive notice of Complainant’s trademarks at the registration.
Respondent has mainly argued as follows. Respondent has not violated any of the rules listed of the Policy or engaged in any conduct that would constitute bad faith registration and use pursuant to the Policy. The <vector.email> domain name consists entirely of a common term that has other meanings than the meaning in Complainant’s VECTOR trademark. The use of a common term like “vector” cannot be considered as bad faith. The disputed domain names are also registered after the “Sunrise Period”, which is a period in which trademark holders have a first opportunity to register domain names corresponding to their marks.
The Panel notes initially that the disputed domain names were registered long after the registration dates of Complainant’s trademarks. The disputed domain names incorporate Complainant’s trademarks in their entirety with only insignificant differences for three of the disputed domain names. Based on Respondent’s own contentions, it is highly unlikely that Respondent registered the disputed domain names randomly with no knowledge of Complainant and Complainant’s trademarks. On the contrary, it is implicit from the Response that Respondent had the trademarks in mind when he registered the disputed domain names. On this basis, the Panel finds that Respondent must have had actual knowledge of Complainant’s trademarks. Respondent has also registered other well-known trademarks not only in this case but in other UDRP cases. A registration may not of itself confer rights or legitimate interests in a domain name. The Panel finds that Respondent has not acted in good faith in the use and registration of the disputed domain names, including the <vector.email> domain name in particular. Respondent’s allegation of the VECTOR trademark’s generalness can therefore be disregarded. Additionally, it must be emphasized that the use and registration of a domain name that infringes another party’s trademark cannot constitute good faith even if the trademark owner has not utilized the option under the “Sunrise Period”.
The Panel also finds that registrations of several domain names considered as identical or confusingly similar to trademarks with minor differences, when there is no relationship to the owners of these trademarks, must be considered as bad faith registration and use. The Panel finds that the pattern of such conduct can be attributed to Respondent in this case. Since the intention of Respondent’s business model cannot be legitimate under the Policy, the Panel finds Respondent’s conduct to be cybersquatting, which is sufficient evidence of bad faith registration and use.
Moreover, the Panel notes that there is a consensus among panelists that the mere passive holding of a disputed domain name may be evidence not only of bad faith registration, but also indicative of bad faith use. According to Respondent, the disputed domain names are used in a “passive” way and for the purpose of later use in Respondent’s business model. Since Respondent’s business model cannot be legitimate under the Policy, the “passive” use is also sufficient evidence of bad faith use.
In consideration of the above circumstances together with those submitted by Complainant and Respondent in the case, the Panel concludes that Respondent has registered and used the disputed domain names in bad faith. Therefore, the third element of the paragraph 4 (a)(iii) of the Policy is fulfilled.
Reverse Domain Name Hijacking
In the present case, the Panel has concluded that Complainant, for all disputed domain names, has proved the existence of all three elements of the Policy. Therefore, Respondent’s request of a finding of Reverse Domain Name Hijacking cannot be granted.
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.email>, <pringles.email>, <specialk.email>, <allbran.email>, and <vector.email> domain names be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: June 9, 2015
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