Kellogg North America Company v. Richard Harvey / Kellogg Company
Claim Number: FA1710001752030
Complainant is Kellogg North America Company (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Richard Harvey / Kellogg Company (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kelloggscompany.org>, registered with Tucows Domains Inc..
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 Forum electronically on October 4, 2017; the Forum received payment on October 4, 2017.
On October 6, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <kelloggscompany.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2017 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@kelloggscompany.org. Also on October 16, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
FACTUAL AND LEGAL GROUNDS
(Policy, Paragraphs 4(a), (b), (c); Rules, Paragraph 3)
This Complaint is based on the following grounds:
KELLOGG NORTH AMERICA COMPANY (“Complainant”) is the owner of numerous and long- standing common law trademark rights and registrations throughout the world that comprise the “KELLOGG” marks. Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “KELLOGG’S Marks.”
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, http://www.kelloggcompany.com/ and http://www.kelloggsnyc.com/. According to Compete.com, <kelloggs.com> attracts over 344,000 unique visitors per month. Alexa.com ranks <kelloggs.com> as the 31,430th most popular website in the United States.
Kellogg owns multiple world-famous brands, including All-Bran, Froot Loops, Kellogg’s Corn Flakes, Kellogg’s Frosted Flakes, Rice Krispies, Special K, Cocoa Krispies, Apple Jacks, 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 Company is publicly 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 legitimate websites at the domain names <kelloggs.com> and <kelloggcompany.com>.
A. The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights
(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its trademark registrations, Complainant is the owner of KELLOGG’S mark. See United Way of America v. Alex Zingaus, FA 1036202 (Forum 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 Respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum April 23, 2007) (finding that it does not matter whether Complainant has registered its trademark in the country in which Respondent resides, only that it can establish rights in some jurisdiction).
When comparing the Disputed Domain Name to KELLOGG’S mark, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademark. 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); Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (Forum May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
The Disputed Domain Name can be considered as capturing, in its entirety, Complainant’s KELLOGG’S trademark as it simply adds the generic corporate designation “company” to the end of the trademark. The mere addition of this generic term to Complainant’s trademark does not negate the confusing similarity between the Disputed Domain Name and Complainant’s trademark under Policy ¶4(a)(i), and the Disputed Domain Name must be considered confusingly similar to Complainant’s trademark. It is well established that the addition of generic or descriptive terms is not sufficient to overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Homer TLC, Inc. v. Whois Guard, FA 0619597 (Forum Feb. 14, 2006) (finding that the addition of common words to Complainant’s registered mark did not negate the confusing similarity). See also The Royal Bank of Scotland Group plc v. Domain Admin c/o InTrust Domain Names, FA 1347010 (Forum Nov. 1, 2010) (“The disputed domain name incorporates all of complainant’s RBS mark while adding the generic term “credit” and the generic top-level domain “.com.” The addition of a generic term and gTLD fail to distinguish Respondent’s domain name from complainant’s mark”). See Pfizer Inc v. Intermeds, LTD/ John Velasquez, D2005-0153 (WIPO Mar. 29, 2005) (finding the domain shopviagra.com differed from the VIAGRA trademark only in the descriptive term “shop” and that “none of these integers [additional words] alone would preclude the disputed domain name from being confusingly similar”). It is also worth noting that Complainant does business under the name of Kellogg Company and operates a website under the domain name <kelloggcompany.com>. Thus, if anything, the addition of the generic term “company” enhances the confusing similarity between the Disputed Domain Name <kelloggscompany.org> and Complainant’s trademark and business.
Moreover, Respondent’s removal of the apostrophe does nothing to distinguish the Disputed Domain Name from KELLOGG’S trademark. In other words, the omission of the apostrophe does not diminish the confusing similarity between the Disputed Domain Name and KELLOGG’S trademark and should be disregarded for purposes of making this determination. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 0094321 (Forum Apr. 24, 2000) (Finding that punctuation is not significant in determining the similarity of a domain name and mark); Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (The lack of an apostrophe in a domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark).
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 Name
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the CIPO, USPTO and EUIPO to Complainant for the KELLOGG’S mark is prima facie evidence of the validity of the term “KELLOGG’S” as a trademark, of Complainant’s ownership of the KELLOGG’S Marks and of Complainant’s 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 given Respondent permission to use the KELLOGG’S mark in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Name. See Policy, ¶4(c)(ii). Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain name incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007) (finding no rights or legitimate interests for respondent because respondent’s WHOIS information suggests respondent is known by a different name than the domain name). In the instant case, the pertinent Whois information identifies the Registrant as “Richard Harvey” which does not resemble the Disputed Domain Name in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Name, suggests that Respondent is commonly known by the Disputed Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that 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 Respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (Forum July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Additionally, even if the Whois data of the Disputed Domain Name show that Respondent goes by the organization name “Kellogg Company”, there is no evidence to show that Respondent has ever been legitimately known by the KELLOGG’S trademark. Complainant has not found that Respondent has any registered trademarks corresponding to the Disputed Domain Name. Past panels have relied on such lack of evidence to find that Respondent lacks rights or legitimate interests. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, 1602721 (NAF Mar. 3, 2015); see also AOL LLC v. AIM Profiles, 964479 (Forum May 20, 2007) (finding that, although Respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that Respondent was actually commonly known by that domain name).
Respondent is using the Disputed Domain Name to redirect internet users to websites that resolve to a blank page and lack content. Respondent has failed to make use of the Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by numerous past Panels. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (Forum Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name). See also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (Forum Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)). Even if the Disputed Domain Name resolves to a website which is under construction, there is no suggestion that Respondent is using the domain name for other purposes (such as for email or ecommerce purposes). Thus, Respondent is passively holding the Disputed Domain Name rather than using them for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when 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’”).
Respondent registered the Disputed Domain Name <kelloggscompany.org> on June 12, 2017, which is significantly after Complainant filed for registration of its KELLOGG’S trademark with the CIPO, USPTO and EUIPO and also significantly after Complainant’s first use in commerce of its trademark in 1907.
Respondent registered the Disputed Domain Name <kelloggscompany.org> on June 12, 2017, which is significantly after Complainant’s registration of its <kelloggs.com> domain name on August 18, 1995 and <kelloggcompany.com> domain name on October 24, 2002.
In summary, Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, Complainant contends that Policy ¶4(a)(ii) has been satisfied.
C. The Disputed Domain Name was Registered and is Being Used in Bad Faith
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its KELLOGG’S trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using the KELLOGG’S mark since 1907, and has owned the <kelloggs.com> and <kelloggcompany.com> domain names well before Respondent’s registration of the Disputed Domain Name. Indeed, by registering domain name that use Complainant’s famous KELLOGG’S trademark with the addition of the generic term “company”, Respondent has demonstrated a thorough knowledge of Complainant’s brands and business. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered. SeeTelstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, KELLOGG’S is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – 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). Further, where the Disputed Domain Name incorporates Complainant’s KELLOGG’S trademark while adding the generic term “company”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007-1415 (WIPO Dec. 10, 2007)
In addition to Complainant’s international presence and reputation, performing searches across a number of internet search engines for the terms “kelloggs company” return multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given 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”); Victoria's Secret v. Hardin, FA 096694 (Forum Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Thus, in lieu of Complainant’s KELLOGG’S trademark being well-known worldwide, Respondent should be considered as possessing actual notice and knowledge of Complainant’s mark, and thus having registered the Disputed Domain Name in bad faith.
The Disputed Domain Name also currently resolves to an inactive site and is not being used, though past Panels have noted that the word bad faith "use" in the context of ¶4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith"). See also Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose). See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”). In this case, the Disputed Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Disputed Domain Name, factors which should be duly considered in assessing bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). 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). See also Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Based on the above, the Disputed Domain Name can only be taken as intending to cause confusion among internet users as to the source of the Disputed Domain Name, and thus, the Disputed Domain Name must be considered as having been registered and used in bad faith pursuant to Policy ¶4(b)(iv), with no good faith use possible. More specifically, where the Disputed Domain Name includes Complainant’s KELLOGG’S mark and adds the generic term “company”, there is no plausible good- faith reason or logic for Respondent to have registered the Disputed Domain Name, and “…the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith.” See Vevo LLC v. Ming Tuff, FA 1440981 (Forum May 29, 2012). Further, considering these circumstances, any use of the Disputed Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith. See Indymac Bank v. Ebeyer, FA 0175292 (Forum Sept. 19, 2003) (Panel holding “there is no conceivable way [r]espondent could use the disputed domain names such that they would not infringe on [c]omplainant’s INDYMAC mark, and therefore it is illogical to await [r]espondent’s use of the domain names to find bad faith use”).
It should also be noted that Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further 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); T-Mobile USA, Inc. v. Utahhealth, FA 0697819 (Forum 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”); Yahoo! Inc. v. cancelyahoo.org Private Registrant/ A Happy DreamHost Customer, FA 1503412 (NAF July 29, 2013) (“Respondent used a privacy service to register the disputed domain name…which raised the rebuttable presumption of bad faith registration and use of the disputed domain name”).
Finally, Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Failure to respond to a cease-and-desist letters may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
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 transferring or cancelling 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(f), 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 (Forum July 31, 2000) (holding that 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 to hold a registration for the KELLOGG’S mark with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”) and the European Intellectual Property Office (“EUIPO”). Registration with a governmental national trademark agency, such as the USPTO (or CIPO or EUIPO), is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has sufficiently demonstrated rights in the KELLOGG’S mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <kelloggscompany.org> is confusingly similar to the KELLOGG’S mark. Complainant’s entire mark is included in the disputed domain name. The punctuation (an apostrophe) is removed, which must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits apostrophes. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. The additional of a related generic term (“company” in this case) does not adequately differentiate Respondent’s domain name from Complainant’s mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“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.”). Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
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 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 has no rights or legitimate interests in <kelloggscompany.org> because Respondent is not commonly known by the disputed domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. Even when WHOIS information appears to suggest a respondent is commonly known by the disputed domain name, Respondent must support this contention with affirmative evidence. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). The revealed private WHOIS information identifies the registrant for <kelloggscompany.org> as “Richard Harvey” of “Kellogg Company.” Complainant says Respondent is not affiliated in any way with Complainant. This leads to the inevitable conclusion the private WHOIS information is false. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s <kelloggscompany.org> does not make 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). Passively holding a disputed domain name does create any right or legitimate interest. When there are no demonstrable preparations to use and the domain name is passively held, respondents cannot show any right or legitimate interest in a disputed domain name. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). <kelloggscompany.org> resolves to a blue screen with “kelloggscompany.org” in large type, with “We’re under construction. Please check back for an update soon” located at the bottom of the screen. While it is possible to use a domain name other than for a web site, Respondent makes no such contention here. Respondent fails to make 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).
Respondent acquired no rights by registering the disputed domain name by using a WHOIS privacy service. Respondent did nothing to public associate itself with the disputed domain name. Therefore, Respondent could not have acquired any rights simply through the registration of the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used <kelloggscompany.org> in bad faith by intending to cause confusion among users as to source, sponsorship, affiliation, or endorsement in using the KELLOGG’S mark. Purchasing and failing to make an active use of a domain name constitutes bad faith registration and use. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶4(b)(iv) even though Respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Respondent registered and used the <kelloggscompany.org> to create confusion by using the KELLOGG’S mark because there is no plausible or good-faith logic to suggest otherwise.
Complainant claims Respondent registered and used <kelloggscompany.org> in bad faith because Respondent used a privacy service to conceal its identity. Using a WHOIS privacy service in the commercial context raises a rebuttable presumption of bad faith registration and use, Albert Lee, Inc. v. Winsum Wong, FA1207001453019, Bloomberg Finance L.P. v. PPA Media Services / Ryan G Foo, FA1301001478654, Google Inc. v. Privacy-Protect.cn / Henry Nguyen Gong, FA1301001480881, Euromarket Designs, Inc. DBA Crate & Barrel v. PRIVACY PROTECT C/O CRATEANDBARREEL.COM, C/O CRATEDANDBARREL.COM, FA1301001480566, Microsoft Corporation and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615, Cargill, Incorporated v. Domain Privacy Group, FA1305001501652, Yahoo! Inc. v. cancelyahoo.org Private Registrant / A Happy DreamHost Customer, FA1306001503412, Salvatore Ferragamo S.p.A. v. Ferruccio Ferragamo, FA1309001521958, Stuart Weitzman IP, LLC v. Jeff Lander, FA1310001526245, LD Products, Inc. v. Whois Agent / Whois Privacy Protection Service, Inc., FA1311001528680, Baylor University v. Domain Administrator c/o Fundacion Private Whois, FA1401001541455, Black Hills Ammunition, Inc. v. ICS INC., FA1401001541563, Target Brands, Inc. v. Domain Hostmaster, CustomerID: 86519751347977,33528701558664,67451560378250 / Whois Privacy Services Pty Ltd, FA1403001550427, WordPress Foundation v. Domain Backorder Domain-Catch.com / Net Solutions Holding LLC, FA1404001552560, Academy, Ltd., d/b/a Academy Sports + Outdoors v. Pham Dinh Nhut, FA1404001552721, KELLOGG NORTH AMERICA COMPANY v. RespectedResponse.org c/o Respected Responsse, FA1404001552051, Homer TLC, Inc. v. Domain Manager, FA1406001563234, Microsoft Corporation v. Mantas Bakutis / Manto Bakucio II, FA1407001571317, Ecolab USA Inc. v. PPA Media Services / Ryan G Foo, FA1408001577427, Staples, Inc. and Staples the Office Superstores, LLC v. Maria Stankova, FA1409001578472, NIKE, Inc. v. Elah Blake / N/A, FA1409001580701, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1410001583409, Tyco Fire & Security GmbH v. Feodor Lisovsky, Claim Number: FA1411001588279, National Geographic Society v. Domain Admin / Private Registrations Aktien Gesellschaft, Claim Number: FA1412001596598, Capital One Financial Corp. v PATRIC BAUER / VENTURE CAPITAL ONE GROUP, Claim Number: FA1501001599899, Twitch Interactive, Inc. v. Jason Hardwick, Claim Number: FA1501001601323, Homer TLC, Inc. v. KAREL KAPTEYN / BEE38, Claim Number: FA1504001613701, Staples, Inc. v. Whois Privacy Shield Services, Claim Number: FA1505001617690, Ashley Furniture Industries, Inc. v. amir shirazi, Claim Number: FA1505001621012, Lockheed Martin Corporation v. toyosei maruyama, Claim Number: FA1505001620489, TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, Claim Number: FA1506001623459, MG Icon LLC v. DNS MANAGER / HTTP GROUP, Claim Number: FA1511001649222, j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, Claim Number: FA1511001647718, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir, Claim Number: FA1511001649807, Navigant Consulting, Inc. v. Daison Arikkat / NAVIGANT ENGINEERING CONSULTANTS, Claim Number: FA1602001660462, Wells Fargo & Company v. Ryan G Foo / PPA Media Services, Claim Number: FA1605001673631, American Thoracic Society v. shaheer khan, Claim Number: FA1606001678239, Gilead Sciences, Inc. v. VLADIMIR LENCHITSKY / TARGET LOGIX LLC, Claim Number: FA1606001678718, Enterprise Holdings, Inc. v. Pinnacle Investment Group, LLC / Erik Day, Claim Number: FA1607001684948, Cerner Corporation v. yangzhichao, Claim Number: FA1607001685754, Priceline.com, Inc. v. Private Registration / WhoisGuardService.com, Claim Number: FA1608001686935, Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj / Nava Mani / Whois Agent LiquidNet US LLC / 123-hp.co, Claim Number: FA1609001696018, KFC Corporation v. Domain Admin / Whois protection, this company does not own this domain name s.r.o., Claim Number: FA1610001697817, T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED, Claim Number: FA1612001705342, The Toronto-Dominion Bank v. TD Bank, Claim Number: FA1612001707004, United States Postal Service v. GARY WIGGIN / JY, Claim Number: FA1612001708540, The Toronto-Dominion Bank v. Yen Leen / cmec, Claim Number: FA1702001715571, American Petroleum Institute v. Nafeea Hosein / API PIPELINE / Fawwaaz Hosein / API Pipeline Construction Co. Ltd., Claim Number: FA1612001708209, State Farm Mutual Automobile Insurance Company v. Sal Avallone / Salerno Service Station, Claim Number: FA1702001717543, Capital One Financial Corp. v. Maddisyn Fernandes / Fernandes Privacy Holdings, Claim Number: FA1703001722770, Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Reneil Montoya / Sploom LLC, Claim Number: FA170400172544, Hammy Media, Ltd. and xHamster IP Holdings Ltd v. WhoisProtectService.net / PROTECTSERVICE, LTD., Claim Number: FA1704001725933, Google Inc. v. Domain Name Privacy Protection, Claim Number: FA1705001732901, Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, Claim Number: FA1706001734634, Pettigo Comercio Internacional Lda v. MUHAMMAD FAISAL / FAISAL KHAN, Claim Number: FA1708001743042, Dell Inc. v. Suchada Phrasaeng, Claim Number: FA1708001745812, Transamerica Corporation v. Domain Manager / samirnet -domain names for sale, Claim Number: FA1709001748623, Traction Corporation v. Ken Zi Wang, Claim Number: FA1709001750913, and iFinex Inc. v. Sergey Valerievich Kireev / Kireev, Claim Number: FA1709001750446. Respondent has done nothing to rebut that presumption, leaving the Panel to conclude Respondent registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii).
Respondent’s identity in the WHOIS information was hidden at the time the complaint was filed. At that time, the name was listed as “Contact Privacy Inc. Customer 014847677.” Once the WHOIS privacy screen is dropped, it became clear Respondent used a non de plume behind the WHOIS privacy service (sort of like a matryoshka doll, also known as a Russian nesting doll). Giving false WHOIS contact information also raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption either. This Panel will find bad faith registration and use on these grounds alone, The Toronto-Dominion Bank v. TD Bank, Claim Number: FA1612001707004, Zoetis Inc. and Zoetis Services LLC v. tomy Office, Claim Number: FA1703001721046, The Toronto-Dominion Bank v. Ugo King, Claim Number: FA1606001680782, Gilead Sciences, Inc. v. VLADIMIR LENCHITSKY / TARGET LOGIX LLC, Claim Number: FA1606001678718, Homer TLC, Inc. v. Domain Admin / Whois Privacy Corp., Claim Number: FA1606001677982, and CircleBack Lending, Inc. v. Andy Tang, Claim Number: FA1603001667870. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii).
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 <kelloggscompany.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, November 16, 2017
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