The Pillsbury Company v. Keyword Marketing, Inc.
Claim Number: FA0608000780315
Complainant is The Pillsbury Company (“Complainant”), represented by Carrie L. Johnson, of Fulbright & Jaworski, 2100 IDS Center, 80 S. Eighth Street, Minneapolis, MN 55402. Respondent is Keyword Marketing, Inc. (“Respondent”), P.O. Box 556, Main Street, Charlestown West Indies, KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pillsburystore.com>, registered with Capitoldomains, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2006.
On August 19, 2006, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <pillsburystore.com> domain name is registered with Capitoldomains, Llc and that Respondent is the current registrant of the name. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 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@pillsburystore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is well known in the field of cooking, particularly baking.
Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the PILLSBURY trademark, including Reg. No. 45, 179 (issued August 8, 1905) and Reg. No. 563,259 (issued August 26, 1952).
The goods and services offered by Complainant under the PILLSBURY mark include pie crusts, cookie dough, biscuits, breakfast pastries, cake mixes, cookbooks, baking contests and collectibles.
Complainant offers these goods and services at websites found at the <pillsbury.com> and <pillsburyshopping.com> domain names, both of which are registered to Complainant.
Respondent is not affiliated with Complainant and has not received permission from Complainant to reflect Complainant’s mark in a domain name.
Respondent registered the <pillsburystore.com> domain name on October 25, 2005.
Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which features links to third-party websites.
Many of the links posted on Respondent’s website resolve to commercial websites offering goods and services in competition with the business of Complainant or purporting to offer Complainant’s goods and services without Complainant’s permission.
Respondent’s <pillsburystore.com> domain name is confusingly similar to Complainant’s PILLSBURY mark.
Respondent does not have any rights or legitimate interests in the <pillsburystore.com> domain name.
Respondent registered and uses the <pillsburystore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the PILLSBURY mark
through registration of the mark with the USPTO. It is undisputed on the record before us that Complainant’s
rights in the mark were established long before Respondent registered the
disputed domain name. Complainant’s
rights in the PILLSBURY mark therefore meet the requirements of Policy ¶
4(a)(i). See 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.”
Moreover, the <pillsburystore.com> domain name is confusingly similar to Complainant’s PILLSBURY mark. Respondent’s domain name includes Complainant’s mark in its entirety and merely adds the generic term “store.” Because Complainant sells goods, both at its commercial website and in grocery stores, the term “store” is descriptive of Complainant’s business. Thus the addition of the descriptive term “store” to Complainant’s mark does not overcome the confusing similarity between the disputed domain name and Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
See also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where a respondent’s domain name combines a
complainant’s mark with a generic term that has an obvious relationship to that
complainant’s business); likewise see
Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding
the <westfieldshopping.com> domain name confusingly similar to a
competing because the WESTFIELD mark was the dominant element).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that
Respondent lacks rights or legitimate interests in the disputed domain
name. Complainant’s assertion
constitutes a prima facie case under the Policy and shifts the burden to
Respondent to demonstrate that it has rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). By failing to
submit a Response, Respondent has declined to provide the Panel with evidence
and arguments that might demonstrate those rights or legitimate interests. The Panel therefore presumes that Respondent
lacks such rights or legitimate interests.
See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where a complainant has asserted that a respondent has no rights or
legitimate interests with respect to a domain name, it is incumbent on that
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
Nonetheless, the Panel
will examine the available evidence to determine whether there may be any basis
for concluding that Respondent has rights or legitimate interests in the
disputed domain name as contemplated by Policy ¶ 4(c).
In this connection, we first observe that there is no dispute in this record that Respondent uses the disputed domain name to redirect Internet users to Respondent’s website, which is composed of links to third-party websites, some of which offer goods and services in competition with the business of Complainant, while others offer Complainant’s goods and services without Complainant’s authorization. Presumably, Respondent receives pay-per-click referral fees from these links. Such use is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website displaying a series of links, some of which resolved to that complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that a respondent’s use of the domain names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> to redirect Internet users to a website featuring advertisements and links to a complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Furthermore, there is no available evidence in this record
indicating that Respondent is commonly known by the <pillsburystore.com>
domain name. Indeed Respondent’s
WHOIS information identifies Respondent as “Keyword Marketing, Inc.,” a name
with no apparent relation to the disputed domain name. Additionally, Complainant asserts, and
Respondent does not deny, that Respondent is not affiliated with Complainant
and has not received permission from Complainant to reflect Complainant’s mark
in a domain name. See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” is a factor in determining that Respondent lacks rights or
interests for purposes of Policy ¶ 4(a)(ii); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where a respondent was not commonly
known by the mark there in question and never applied for a license or
permission from a complainant to use a trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <pillsburystore.com> domain name is confusingly similar to Complainant’s PILLSBURY mark. Because this is so, Internet users seeking Complainant’s genuine website may find themselves redirected to Respondent’s website because of that confusing similarity. Further, once at Respondent’s website, Internet users may mistakenly believe that the site is sponsored by or affiliated with Complainant. The nature of the links to third-party websites, which refer to Complainant and Complainant’s goods and services, reinforce this mistaken understanding of a possible relationship between Respondent and Complainant. Presumably, Respondent receives pay-per-click referral fees from the links, thus profiting from Internet users’ confusion. All of this is evidence of bad faith use of the disputed domain pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” See also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith use under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites featuring services similar to a complainant’s services).
To this may be added the fact that it appears from the record
that Respondent registered the contested domain name with either actual or
constructive knowledge of Complainant’s rights in the PILLSBURY mark by virtue
of Complainant’s prior registration of that mark with the pertinent national
authorities. Registration of a
confusingly similar domain name despite such actual or constructive knowledge,
without more, evidences bad faith registration within the meaning of Policy ¶
4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000); see also Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002), and
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <pillsburystore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 3, 2006
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