General Mills Inc. v. Keyword Marketing, Inc.
Claim Number: FA0702000921284
Complainant is General Mills Inc. (“Complainant”), represented by Carrie
L. Johnson, of Fulbright &
Jaworski, 2100 IDS Center,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <fruitroll-ups.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2007.
On February 21, 2007, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <fruitroll-ups.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 February 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2007 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@fruitroll-ups.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <fruitroll-ups.com> domain name is identical to Complainant’s FRUIT ROLL-UPS mark.
2. Respondent does not have any rights or legitimate interests in the <fruitroll-ups.com> domain name.
3. Respondent registered and used the <fruitroll-ups.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, General Mills Inc., is the manufacturer, producer, and marketer of a fruit-based snack food under the FRUIT ROLL-UPS mark. Complainant has continuously and extensively used the FRUIT ROLL-UPS mark since 1978 in connection with this fruit-based snack food. Over the last five years, Complainant has annually averaged over $55 million in sales and has shipped over two million cases of the fruit-based snack food.
Complainant has registered the FRUIT ROLL-UPS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,127,591 issued December 11, 1979). Complainant also holds over thirty-one other trademark registrations for the FRUIT ROLL-UPS mark with trademark authorities around the world.
Respondent’s <fruitroll-ups.com> domain name, which it registered on October 11, 2005, redirects Internet users to a commercial web directory displaying links to other snack foods, such as “Protein Candy Bar,” “Breakfast Bars,” and “Betty Crocker Fruit Snacks,” some of which resolve to the websites of Complainant’s direct competitors in the snack food industry.
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 registered the FRUIT ROLL-UPS mark with not only the USPTO, but also with numerous other trademark authorities around the world. As a result, Complainant has sufficiently demonstrated that it has rights in the FRUIT ROLL-UPS mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
By removing the space between terms of the FRUIT ROLL-UPS mark and adding the generic top-level domain (“gTLD”) “.com,” both merely functional changes, Respondent has not done enough to distinguish the <fruitroll-ups.com> domain name from the Complainant’s FRUIT ROLL-UPS mark. In W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005), the panel found the <wuib.com> to be identical to the complainant’s mark because the generic top-level domain (“gTLD”) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance. Moreover, the panel in Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) found that the elimination of the space between the terms of the complainant’s CROATIA AIRLINES mark in the <croatiaairlines.com> domain name was not enough to avoid a finding that the disputed domain name was identical to the mark. Consequently, the Panel cannot find any distinguishing differences between Respondent’s <fruitroll-ups.com> and Complainant’s FRUIT ROLL-UPS mark and therefore concludes that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <fruitroll-ups.com>
domain name. Complainant must first make
a prima facie case in support of its
allegations. The burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that
the respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26,
2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show
that the respondent has no rights to or legitimate interests in the subject
domain name and that once the complainant makes this showing, the burden of
production shifts to the respondent to rebut the complainant’s allegations).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <fruitroll-ups.com> domain name. See
Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By
its default, Respondent has not contested the allegation . . . that the
Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no
other reason for the Respondent having registered <bancodobrasil.com> but
the presumably known existence of the Complainant’s mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Keyword Marketing, Inc.,” and there is nothing
in the record to suggest that Respondent is commonly known by the <fruitroll-ups.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <fruitroll-ups.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See The Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was
not commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests
in a disputed domain name where there is no evidence in the record indicating
that the respondent is commonly known by the disputed domain name).
In addition, Respondent is using the <fruitroll-ups.com> domain name in connection with a commercial web directory displaying links to the websites of competing snack food manufacturers. In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because the respondent was diverting Internet users to the website of one of the complainant’s competitors. Similarly, Respondent is diverting Internet users seeking information on Complainant’s snack food products to the websites of competing companies. Respondent likely receives click-through fees for diverting Internet users to these websites. As a result, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See The Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the contested domain
name to promote competing snack food companies also indicates that Respondent
has registered and is using the disputed domain name to take advantage of the
confusing similarity between the <fruitroll-ups.com>
domain name and Complainant’s mark in order to profit from the goodwill
associated with the mark, presumably in the form of click-through fees. Such registration and use represents bad
faith according to Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting from click-through fees); see
also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr.
30, 2002) (“Complainants are in the music and entertainment business. The links associated with
<billboard.tv> and <boogie.tv> appear to be in competition for the
same Internet users, which Complainants are trying to attract with the
<billboard.com> web site. There is
clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as
to the source, sponsorship, affiliation, or endorsement of the web site or of a
product or service on the web site.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fruitroll-ups.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
March 30, 2007
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