Hormel Foods Corporation, Hormel Foods Sales, LLC and Hormel Foods LLC v. Steve Kerry d/b/a North West Enterprise, Inc.
Claim Number: FA0601000621103
Complainants are Hormel Foods Corporation, Hormel Foods Sales, LLC and Hormel Foods LLC (collectively, “Complainant”), represented by William Schultz, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215. Respondent is Steve Kerry d/b/a North West Enterprise, Inc. (“Respondent”), 22915 Telegraph Rd, Santa Fe Springs, CA 90670.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hormel.net>, registered with Onlinenic, Inc.
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.
Tyrus R. Atkinson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2006.
On January 8, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <hormel.net> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 January 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 2006 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@hormel.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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 <hormel.net> domain name is identical to Complainant’s HORMEL mark.
2. Respondent does not have any rights or legitimate interests in the <hormel.net> domain name.
3. Respondent registered and used the <hormel.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Hormel Foods Corporation, Hormel Foods Sales, LLC, and Hormel Foods, LLC manufacture, produce, market, and sell products and services under the HORMEL brand. Hormel Foods Corporation is an international manufacturer and marketer of high-quality meat and food products. Hormel Foods Sales, LLC is the marketer and seller of Hormel Foods Corporation’s products. Hormel Foods, LLC owns and licenses trademarks related to goods that Hormel Foods Sales, LLC sells to consumers.
The HORMEL mark has been in existence since at least 1920. Complainant owns several trademark registrations worldwide. On September 1, 2005, Complainant renewed United States Patent and Trademark Office (“USPTO”) Reg. No. 1,013,611 for HORMEL, first registered in 1920, for a variety of meat products. On August 24, 2005, Complainant renewed USPTO Reg. No. 1,012, 381 for HORMEL, first registered in 1920, for animal feed and feed supplements. On November 29, 2005, Complainant renewed USPTO Reg. No. 1,913,539 for HORMEL, first registered in 1993, for several pork, meat, and fish products.
Respondent registered the <hormel.net > domain name on June 14, 2001. Respondent’s website contains links to terms such as “Hormel,” “producers,” and “food nutrition,” which are also found on Complainant’s website. Respondent is using the domain name to deceive consumers into clicking on these links in the belief that they are being directed to Complainant’s products and services, when they are in fact directed to search engines and generic commercial sites.
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. 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.”).
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 rights in the HORMEL mark
through its numerous trademark registrations worldwide, including USPTO Reg.
Nos. 1,013,611; 1,012,381; and 1,913,539.
See Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <hormel.net>
is identical to Complainant’s HORMEL mark pursuant to Policy ¶ 4(a)(i),
because it solely consists of Complainant’s registered HORMEL mark, followed by
a generic top-level domain name. The
Panel finds that top-level domain names are irrelevant in determining whether a
domain name is identical or confusingly similar to a mark. 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 Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to the complainant’s famous NIKE
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <hormel.net> domain name. Complainant has the initial burden of proof in asserting that Respondent has no legitimate interests in the domain name, and once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have a right or legitimate interest in the disputed domain name. See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer Complainant’s complaint raises a presumption that Respondent has no rights or legitimate interests in the <hormel.net> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Moreover, Respondent is using the disputed domain name, which is identical to Complainant’s mark to operate a website that displays links to terms related to Complainant’s mark and features links to unrelated commercial sites. This misleading use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is also no evidence in the record that Respondent is
commonly known by the <hormel.net> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <hormel.net> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name, which is identical to Complainant’s HORMEL mark, to operate a website featuring links to various commercial websites. The Panel infers that Respondent receives click-through fees for diverting consumers to these websites. Thus, Internet users accessing Respondent’s domain name may become confused as to the affiliation between Complainant’s mark and Respondent’s website. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hormel.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: February 21, 2006
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