Kellogg Company and Kellogg North America Company v. Froot Loops of The Carolinas c/o Arnold, Carrie
Claim Number: FA0607000758812
Complainant is Kellogg Company and Kellogg North America Company (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C., 11730 Plaza America Dr., Suite 600, Reston, VA 20190. Respondent is Froot Loops of The Carolinas c/o Arnold, Carrie (“Respondent”), 382 Riverwood Rd, Mooresville, NC 28177-8929.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <frootloopsnc.com>, registered with Netfirms, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2006.
On July 27, 2006, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <frootloopsnc.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 August 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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@frootloopsnc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <frootloopsnc.com> domain name is confusingly similar to Complainant’s FROOT LOOPS mark.
2. Respondent does not have any rights or legitimate interests in the <frootloopsnc.com> domain name.
3. Respondent registered and used the <frootloopsnc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kellogg Company, has long been engaged in the manufacture, distribution, marketing, advertising, promotion, and sale of ready-to-eat cereal. For over twenty years, Complainant has used the FROOT LOOPS mark in connection various goods and promotional products, including toys, games, puzzles, sporting goods, and equipment. Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) including the FROOT LOOPS mark (Reg. No. 786,518 issued March 9, 1965).
Respondent registered the <frootloopsnc.com> domain name on May 6, 2006. Respondent’s disputed domain name resolves to a website that prominently displays Complainant’s FROOT LOOPS mark with a notice stating that the “Froot Loops Party Rental” website is coming soon.
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 submitted evidence sufficient to establish
rights in the FROOT LOOPS mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”); 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.”).
Complainant contends that Respondent’s <frootloopsnc.com> domain name is confusingly similar to Complainant’s FROOT LOOPS mark. Complainant further contends that Respondent’s disputed domain name contains Complainant’s entire mark and adds the letters “nc,” the commonly accepted abbreviation for the geographic area North Carolina. The Panel finds that the addition of common geographic identifiers such as “nc” fails to sufficiently distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <frootloopsnc.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is neither commonly known by the <frootloopsnc.com> domain name nor licensed to register names featuring Complainant’s FROOT LOOPS mark. In the absence of evidence suggesting otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Furthermore, Complainant contends that Respondent’s domain name resolves to a website that prominently displays Complainant’s FROOT LOOPS mark with a notice stating a website featuring party rental goods and services will be coming soon. In instances where Respondent declares an intent to develop a website, the Panel requires Respondent to show evidence of the alleged preparations as well as evidence that such preparations were commenced prior to the filing of the domain name dispute. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”). In the matter at hand, Respondent has failed to bring forth evidence to support its assertions of an intent to develop a legitimate website for use in connection with the <frootloopsnc.com> domain name. As such, the Panel finds that Respondent has failed to show either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) ("Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has failed to make use of the disputed domain name and that such failure to develop a legitimate use is evidence of bad faith registration and use. The Panel finds that Respondent’s failure to develop a website in connection with the <frootloopsnc.com> domain name other then the prominent display of Complainant’s FROOT LOOPS mark and the failure of Respondent to bring forth evidence of future use results in a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <frootloopsnc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 6, 2006
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