Kraft Foods Holdings, Inc. v. LaPorte
Holdings c/o Admin
Claim Number: FA0503000449415
Complainant is Kraft Foods Holdings, Inc. (“Complainant”),
Three Lakes Drive, NF 579, Northfield, IL 60093. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd., #1928, Los Angeles, CA
90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <koolaidjammers.com>, registered with Nameking.com,
Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 6, 2005.
On
April 8, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <koolaidjammers.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. 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
April 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2005
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@koolaidjammers.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 9, 2005, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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.” 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 makes the following assertions:
1. Respondent’s <koolaidjammers.com>
domain name is identical to Complainant’s KOOL-AID JAMMERS mark.
2. Respondent does not have any rights or
legitimate interests in the <koolaidjammers.com> domain name.
3. Respondent registered and used the <koolaidjammers.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
continuously and exclusively used the KOOL-AID JAMMERS mark in connection with
powders and concentrates for making soft drinks since September 2001.
Complainant has affixed the KOOL-AID JAMMERS mark on packaging for products
that it sells under the mark. Complainant has expended considerable sums of
money developing and promoting its soft drinks under its KOOL-AID and KOOL-AID
JAMMERS marks. As a result, Complainant has acquired substantial goodwill in
its marks. Complainant also holds numerous trademark registrations that
incorporate the KOOL-AID mark and has used that mark continuously since at
least as early as April 11, 1940.
Respondent
registered the <koolaidjammers.com> domain name on February 14,
2004. The domain name does not resolve to any active website. Respondent is not
licensed to use Complainant’s mark. Numerous other panels have found that
Respondent has prevented trademark holders from reflecting their marks in
corresponding domain names.
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 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 has
established that it has acquired rights in the KOOL-AID JAMMERS mark through
use of the mark in connection with its products since 2001. The Policy
recognizes that complainants may establish rights in a mark either through
registration with a government authority or through use of the mark in
commerce. As a result of Complainant’s continuous and exclusive use of the KOOL-AID
JAMMERS mark in commerce, the Panel finds that the mark has become a
distinctive source identifier for Complainant’s products. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a
complainant’s trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar.
23, 2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established).
The <koolaidjammers.com>
domain name is identical to Complainant’s KOOL-AID JAMMERS mark. The domain
name fully incorporates the mark while simply removing a hyphen and a space and
adding the “.com” generic top-level domain (“gTLD”). The removal of a hyphen
and a space and the addition of a gTLD do not distinguish the domain name from
Complainant’s mark. Thus, the Panel finds that the domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also 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”); see also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not
alter the fact that a name is identical to a mark.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant alleges that
Respondent lacks rights and legitimate interests in the <koolaidjammers.com>
domain name. Neither Respondent nor the evidence contradicts this allegation. Furthermore,
because Respondent failed to submit a response, Respondent has not proposed any
set of circumstances that could substantiate its rights or legitimate interests
in the disputed domain name under Policy ¶ 4(a)(ii). See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that a respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of a complaint to be deemed true); see
also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that a complainant’s allegations are true unless clearly
contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) because the
domain name does not resolve to any active website. Moreover, no evidence
before the Panel shows that Respondent has made any use of the disputed domain
name since it was registered fifteen months ago. The Panel finds that, under
these circumstances, Policy ¶¶ 4(c)(i) and 4(c)(iii) are inapplicable to
Respondent. See Pharmacia & Upjohn AB
v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where the respondent failed to submit a response to the complaint and
had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, the respondent had not used the domain names in connection with any
type of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where the respondent merely
passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001)
(finding no rights or legitimate interests where the respondent made no use of
the infringing domain names).
No evidence
before the Panel suggests that Respondent is commonly known by the <koolaidjammers.com>
domain name. The domain name’s WHOIS information indicates that the registrant
of the disputed domain name is known as “LaPorte Holdings LLC c/o Admin” and is
not known by the second-level domain that is identical to Complainant’s
KOOL-AID JAMMERS mark. Moreover, Respondent is not licensed to use
Complainant’s mark. Thus, Respondent lacks rights and legitimate interests in
the domain name under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered a domain name that is identical to Complainant’s KOOL-AID JAMMERS
mark. Complainant cites several other cases where Respondent registered domain
names identical to trademarks belonging to others. The Panel finds that
Respondent’s registration of the <koolaidjammers.com> domain name prevents
Complainant from reflecting its KOOL-AID JAMMERS mark in a corresponding domain
name. Furthermore, the Panel finds that Respondent has engaged in a pattern of
such activity. Respondent’s pattern of preventing numerous trademark owners
from reflecting their marks in corresponding domain names evidences that it
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(ii). See Armstrong Holdings,
Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that
the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names
that infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain
names is one factor in determining registration and use in bad faith).
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of the domain name, additional factors can also be
used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent has
made no use of the <koolaidjammers.com> domain name, which is identical
to Complainant’s mark, since the domain name was registered more than a year
ago. The Panel finds that Respondent has engaged in passive holding, which
evidences that Respondent registered and used the domain name in bad faith
under Policy ¶ 4(a)(iii). See Phat
Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) even though the respondent has not used the
domain name because “it makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <koolaidjammers.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 19, 2005
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