KELLOGG NORTH AMERICA COMPANY v. RespectedResponse.org c/o Respected Responsse
Claim Number: FA1404001552051
Complainant is KELLOGG NORTH AMERICA COMPANY (“Complainant”), represented by James K. Lewis, Michigan, USA. Respondent is RespectedResponse.org c/o Respected Responsse (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kelogg.com>, registered with BigRock Solutions Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2014; the National Arbitration Forum received payment on April 1, 2014.
On April 1, 2014, BigRock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <kelogg.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the names. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kelogg.com. Also on April 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
The Complainant, KELLOGG NORTH AMERICA COMPANY, is the owner of numerous trademark registrations in the United States and Europe that comprise the “KELLOGG” mark, which are registered with the U.S. Patent and Trademark Office (USPTO), UK Intellectual Property Office Trade Mark Search database, and the Office for Harmonization in the Internal Market (OHIM), which demonstrate that the Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are:
[i.] KELLOGG'S for Nice classifications 1, 5, 29, 30, 31, 32 and 46 (U.S. Trademark Reg. No. 0115348);
[ii.] KELLOGG'S for Nice classification 30 and 46 (U.S. Trademark Reg. No. 0147454);
[iii.] KELLOGG'S for Nice classification 30 and 46 (U.S. Trademark Reg. No. 0707012);
[iv.] KELLOGG'S for Nice classification 16, 41 and 42 (OHIM CTM Reg. No. 000814277);
[v.] KELLOGG'S for Nice classifications 5, 29, 30 (OHIM CTM Reg. No. 001501147);
[vi.] KELLOGG'S for Nice classifications 20, 25 and 28 (OHIM CTM Reg. No. 001509017); and,
[vii.] KELLOGG'S for Nice classifications 5 and 30 (UKIP Reg. No. 00000552408).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i)):
The Kellogg Company (informally Kellogg's or Kellogg) is a multinational food manufacturing company founded in 1906 and with current annual sales in excess of $13 billion. Kellogg sells breakfast foods, snacks, frozen foods and beverages in more than 180 countries. Kellogg operates numerous websites, chief among them http://www.kelloggs.com and http://www.kelloggcompany.com/. According to Compete.com, <kelloggs.com> attracts over 850,000 unique visitors per month. Alexa.com ranks <kelloggs.com> as the 4,845th most popular website in the United States.
Kellogg owns multiple world-famous brands, including Fruit Loops, Corn Flakes, Frosted Flakes, Rice Krispies, Special K, Cocoa Krispies, Keebler, Pringles, Pop-Tarts, Kashi, Cheez-It, Eggo, Nutri-Grain, Morningstar Farms, and many more.
Kellogg's largest factory is at Trafford Park in Manchester, United Kingdom, which is also the location of its European headquarters. Kellogg's holds a Royal Warrant from Queen Elizabeth II and the Prince of Wales.
Kellogg is publically traded on the New York Stock Exchange (NYSE) under the symbol “K.”
For purposes of allowing its customers and consumers to research and leave feedback regarding Complainant’s various products, Complainant maintains a legitimate website at the domain name <kelloggs.com>.
By virtue of the use and promotion of the KELLOGG’S mark and ownership of the KELLOGG’S Registrations, Complainant is the owner of the KELLOGG’S mark and has the rights pursuant to Policy ¶4(a)(i). See, United Way of America v. Alex Zingaus, FA1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (NAF Apr. 14, 2006).
Respondent’s domain name, <KELOGG.COM>, is identical and/or confusingly similar to the Complainant’s KELLOGG’S mark and primary domain name. When comparing the Disputed Domain Name to Complainant’s Mark and primary domain name, it becomes clear that Respondent has purposely misspelled them both. In other words, the Respondent’s domain name exemplifies the practice of typosquatting, a practice in which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. See Marriott Int’l, Inc. v. Seocho, FA 149187 (NAF Apr. 28, 2003) (finding marriottt.com confusingly similar to marriott.com). The practice of typosquatting takes advantage of internet users that inadvertently type an incorrect address when seeking to access the trademark owner’s website, which means that the domain name must be confusingly similar by design. See Caterpillar Inc. v. Center for Ban on Drugs, FA0661437 (NAF May 2, 2006) (finding that “the omission of a single letter from Complainant’s mark does not adequately distinguish the disputed domain name from the mark”). A slight misspelling of the Complainant’s domain name and Mark, as is found with the Disputed Domain Name, constitutes typosquatting and is thus confusingly similar to the Complainant’s Mark. See Victoria’s Secret v. Zuccarini, FA0095762 (NAF Nov. 18, 2000) (finding that by misspelling words or adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). In the instant case, Respondent has registered a domain name that differs from Complainant’s legitimate, authorized website, and Complainant’s famous KELLOGG’S Mark, by only two letters, resulting in a domain name that is still phonetically similar – Respondent’s domain name simply removes one of the double “l” and the letter “s” from the KELLOGG’S Mark. See Enterprise Holdings, Inc. v. Caoconggang / caoconggang, FA 1515633 (NAF Sept 26, 2013) (Previous panels have consistently held that words with different spelling but phonetic similarity do not negate confusing similarity of a domain name to a mark.). The fact that Respondent has also excluded the apostrophe from Complainant’s KELLOGG’S Mark is not relevant as multiple Panels have found that “the lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.” See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (NAF Feb. 11, 2003). Therefore, in light of these facts, Respondent’s purposeful misspelling of the Complainant’s registered, famous trademark results in a domain name that is confusing similar to Complainant’s Mark.
The addition of “.com” to “KELOGG” does not create a level of distinctiveness that would overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent’s unauthorized registration and/or use of Complainant’s KELLOGG’S mark as a domain name also creates what the United States Court of Appeals for the Ninth Circuit has labeled “initial interest confusion.” See Brookfield Comm., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062-63 (9th Cir. 1999). Consumers of Kellogg’s products are likely to be confused by Respondent’s domain name. When internet users type “KELOGG” in any number of the available search engines they cannot help but be confused by Respondent’s misuse of the KELLOGG’S mark as indexed by those search engines. Kellogg’s products and services are exactly listed in natural results for searches on all the major search engines—Google, Yahoo, and Bing—using “KELOGG” as the search term.
For the above stated reasons, and because Complainant owns long-standing and valuable rights that are infringed by Respondent’s identical (and/or confusingly similar) domain name, Complainant contends that Policy ¶4(a)(i) has been satisfied.
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)):
[i.] Respondent not known by the domain name.
To Complainant’s knowledge Respondent has not been commonly known by the Disputed Domain Name. See Policy, ¶4(c)(ii). Where the WHOIS information suggests Respondent is known by a name other than the trademark associated with Complainant, and Complainant has not “licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s… mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Name(s). See United Way of America v. Alex Zingaus, FA1036202 (NAF Aug. 30, 2007). In the instant case, the pertinent WHOIS information identifies the Registrant as “Respectedresponse.org c/o Respected Responsse” a name that does not resemble the Disputed Domain Name in any manner – thus, the Respondent cannot be regarded as having been commonly known by the Disputed Domain Name so as to have acquired rights to or legitimate interests in it within the meaning of ¶4(c)(ii) See Instron Corp. v. Kaner, FA 768859 (NAF Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
[ii.] No bona fide use.
The Respondent was using the Disputed Domain Name to direct internet users to a website featuring generic links to third-party websites. Presumably, Respondent received pay-per-click fees from these linked websites. As such, the Respondent was not using the domain name to provide a bona fide offering of goods or services as allowed under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA95396 (NAF Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names); See also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (NAF May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)).
The generation of revenue from domain name parking or other advertising activities represents use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant uses the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that such similarity would lead to confusion on the part of internet users and result in an increased number of internet users being drawn to that domain name parking page. See Express Scripts, Inc. v. Windgather Investments Ltd, D2007-0267, (WIPO Apr. 26, 2007). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trade mark holder (see Paris Hilton v. Deepak Kumar, D2010-1364 (WIPO Apr. 26, 2007)).
In order to constitute “bona fide” use, the offering must meet several requirements. Those include, at a minimum, the following:
- Respondent must actually be offering the goods or services at issue.
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (internal citations omitted).
Respondent’s use fails every one of the foregoing requirements. Respondent has not offered any products, let alone authorized Kellogg branded goods, at the subject website. Additionally, the website at www.kelogg.com has not accurately disclosed Respondent’s status as being wholly unrelated to Complainant. By registering a domain name that is a purposeful misspelling of the KELLOGG’S mark, Respondent is trying “to corner the market” and deprive Complainant of the ability to use and register its own mark in domain names. Id. Accordingly, Respondent registered and is using the domain name only to trade on the goodwill and reputation associated with the KELLOGG’S mark and not in connection with any bona fide offering of goods or services.
Respondent’s use of the domain name only changed after Complainant sent a cease & desist letter. Respondent did not respond to the letter however, he did prevent the name from resolving to the pay-per-click page. This is further evidence Respondent lacks rights in the name because it acts as an acknowledgement from Respondent that he was using the Disputed Domain Name to trade on Complainant’s fame in the mark. The fact that the Disputed Domain Name no longer resolves to an active website is irrelevant since not making active use of the Disputed Domain Name indicates a lack of rights and legitimate interests under Policy ¶4(a)(ii). See Hewlett‑Packard Co. v. Shemesh, FA 434145 (NAF Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i)); see also, Michelin North America, Inc. v. Energie Media Group, FA 451882 (NAF Aug. 7, 2012) (the panel found that inactive use, or “passive holding,” of the disputed domain names by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names”); see also, Thermo Electron Corp. v. Xu, FA 713851 (NAF Jul. 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i)); see also, NIC Industries, Inc. v. Abadaba S.A., FA 448503 (NAF Jul. 17, 2012) (finding that respondent was not making a Policy ¶4(c)(i) bona fide offering of goods or services because respondent was not making an active use of the disputed domain name); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where the domain name did not resolve to a website, and respondent was not commonly known by the domain name).
The Respondent took ownership of the Disputed Domain Name on or about October 31, 2013, which is significantly after the Complainant’s adoption of the KELLOGG’S mark in 1906, the registration of that mark with the USPTO in 1917, and the registration of <kellogg.com> on December 7, 1994 and <kelloggs.com> on August 18, 1995.
[iii] No legitimate or fair use of the domain name.
The granting of registrations by the USPTO to the Complainant for the KELLOGG’S marks is prima facie evidence of the validity of the term KELLOGG’S as a trademark, of Complainants’ ownership of the KELLOGG’S mark, and of Complainants’ exclusive right to use the KELLOGG’S mark in commerce on or in connection with the goods and/or services specified in the registration certificates. Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not granted Respondent permission or authorization to use Complainant’s Marks in any manner, including in domain names.
In summary, Respondent has no rights or legitimate interests in <KELOGG.COM>. Accordingly, Complainant contends that Policy ¶4(a)(ii) has been satisfied.
[c.] The domain name should be considered as having been registered and being used in bad faith for the following reasons (UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii)):
The Complainant and the KELLOGG’S brand are known internationally. The Complainant has marketed and sold goods using the KELLOGG’S mark since the early 1900s. Indeed, by registration of a domain name that is a purposeful misspelling of the Complainant’s famous KELLOGGS trademark, the Respondent has demonstrated a thorough knowledge of the Complainant’s brands and business. Further, the website at which Respondent’s website resolved featured multiple links that many are labeled using terms and products that are closely linked to Complainant’s business. Thus, the totality of the circumstances strongly suggest that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
The Respondent was using the Disputed Domain Name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably received pay-per-click fees in the process. The Respondent was utilizing a variation and misspelling of the Complainant’s KELLOGG’S trademark in order to confuse unsuspecting internet users searching for Complainant’s website, and was thus using the fame of the Complainant’s Marks to deceitfully increase traffic to the website listed at the Disputed Domain Name for commercial gain. It is well established that such conduct constitutes bad faith. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 30, 2006) (“Respondent’s use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith.”).
Furthermore, Respondent’s purposeful registration of a slight misspelling, or typo, of the Complainant’s Mark constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA94864 (NAF July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA94385 (NAF July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
The Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name. See, Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use.”); see also, RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
At the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks, and that registration of a domain name containing well-known trademarks constitutes bad faith per se. Performing a simple “Google” search for the terms “KELOGG” shows links to a number of Complainant’s websites. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005 (“given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.”).
Finally, Respondent, at the time of initial Complaint filing, had employed a privacy service to hide its identity, another evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003); see also T-Mobile USA, Inc. v. Utahhealth, FA 697819 (NAF June 7, 2006) (finding that “Respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration”).
For the foregoing reasons, Complainant contends that Respondent has registered the Disputed Domain in bad faith pursuant to UDRP Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant claims rights in the KELLOGG’S mark, used in connection with break foods, snacks, frozen goods, and beverages. Complainant owns registrations for the KELLOGG’S mark granted by the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 0115348 registered Feb. 6, 1917), inter alia. Therefore, Complainant has adequately proven its rights in the KELLOGG’S mark under Policy ¶4(a)(i) due to its trademark registrations with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <kelogg.com> domain name is confusingly similar to Complainant’s KELLOGG’S mark. The disputed domain name is a misspelling of Complainant’s mark, which removes the letters “l” and “s” and the apostrophe, as well as adding the gTLD “.com.” Misspelling Complainant’s trademark this way does not sufficiently differentiate the disputed domain name from the trademark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶4(a)(i)”). Removing an apostrophe is immaterial because an apostrophe is not a valid character in a domain name. Adding a gTLD is also immaterial because domain name syntax requires a gTLD (or ccTLD) in a domain name. Therefore, these differences cannot adequately distinguish the disputed domain name from Complainant’s trademark. See L’Oreal USA Creative Inc. v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Respondent’s <kelogg.com> domain name is confusingly similar to Complainant’s KELLOGG’S mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 UDRP ¶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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent does not have rights or legitimate interests in <kelogg.com> domain name. Respondent is not commonly known by the disputed domain. Complainant has not authorized Respondent to use its KELLOGG’S mark in any way. The WHOIS record for the disputed domain name lists “RespectedResponse.org c/o Respected Responsse.” Panels consider the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See 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). With this evidence, it seems clear Respondent is not commonly known by the <kelogg.com> domain name under Policy ¶4(c)(ii).
The <kelogg.com> domain name to resolves to a website featuring generic links to third-party websites. Respondent receives pay-per-click fees from these links. The links include “Free cereal coupons”, “Rice Krispy Treats”, “Free Toilet Paper Coupons,” “Want 100% Free Samples?,” and “(Free) Dog Food Coupons.” Using a confusingly similar domain name to host a pay-per-click website does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, Respondent is not making a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Furthermore, Respondent is using a privacy WHOIS service. This means the registered owner of the disputed domain name disclaims any interest in the domain name. The undisclosed beneficial owner is the real party in interest. That person does not publicly associate itself with the disputed domain name. Therefore, Respondent cannot have acquired any rights to the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant’s claims Respondent registered and is using the <kelogg.com> domain name in bad faith by disrupting Complainant’s business. The “click through links” include “Free cereal coupons”, “Rice Krispy Treats”, “Free Toilet Paper Coupons,” “Want 100% Free Samples?,” and “(Free) Dog Food Coupons.” It seems clear under these facts Respondent is competing with Complainant. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). There certainly is at least some initial interest confusion with the disputed domain name. Therefore, this Panel finds Respondent is disrupting Complainant’s business in bad faith under Policy ¶4(b)(iii) and Policy ¶4(b)(iv).
Complainant claims Respondent knew about Complainant’s KELLOGG’S mark prior to registering the <kelogg.com> domain name because it is a well-known mark that turns up in a simple Google search (in fact a user must specifically override the default search on Complainant’s trademark to search for the disputed domain name). Under these facts, it is a reasonable inference Respondent actually knew of Complainant's mark and registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This raises the rebuttable presumption in the commercial context Respondent registered and uses the disputed domain name in bad faith. Respondent has done nothing to rebut this presumption. This factor alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kelogg.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, May 9, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page