Kellogg North America Company v. 11th Street Domains
Claim Number: FA1711001758443
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is 11th Street Domains (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplymadecookies.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On November 15, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <simplymadecookies.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@simplymadecookies.com. Also on November 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 December 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a multinational food manufacturing company that sells breakfast foods, snacks, frozen foods, and beverages in more than 180 countries. Complainant registered the SIMPLY MADE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,512,416, registered Apr. 8, 2014). Respondent’s <simplymadecookies.com>[1] domain name is confusingly similar to the SIMPLY MADE mark because Respondent merely incorporated the mark in its entirety, added an additional term that is related to the Complainant’s products, and attached a “.com” generic top level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <simplymadecookies.com> domain name. Respondent is not commonly known by the <simplymadecookies.com> domain name. Respondent is not sponsored by or affiliated with the Complainant in any way.
3. Respondent does not use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domain name redirects users to a Bing search engine where it had beem pre-configured to search for the phrase “genetic enjineered cookies kellogs” and display unrelated content.
4. The domain name currently resolves to content unrelated to Complainant.
5. Respondent registered and uses the <simplymadecookies.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting users seeking Complainant’s goods and services to Respondent’s unrelated resolving website. Respondent’s <simplymadecookies.com> domain name attempts to confuse users as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by using the SIMPLY MADE mark in connection with the word “cookies” that is obviously related to Complainant’s business. Respondent had actual knowledge and constructive notice of the Complainant’s rights in the SIMPLY MADE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SIMPLY MADE mark. Respondent’s domain name is confusingly similar to Complainant’s SIMPLY MADE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <simplymadecookies.com> domain name and that Respondent registered and uses the domain name 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 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.
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 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 has rights in the SIMPLY MADE mark based upon registration with the USPTO (e.g., Reg. No. 4,512,416, registered Apr. 8, 2014). 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.”). Therefore, the Panel finds that the Complainant has rights in the SIMPLY MADE mark per Policy ¶ 4(a)(i).
Next, Complainant alleges that the Respondent’s <simplymadecookies.com> domain name is confusingly similar to the Complainant’s SIMPLY MADE mark. Complainant argues that the changes Respondent made to the mark are insufficient to distinguish the domain name from Complainant’s, and the addition of a gTLD is irrelevant. The Panel agrees. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <simplymadecookies.com> domain name takes Complainant’s SIMPLY MADE mark and adds the word “cookies,” which alludes to Complainant’s “Keebler” cookies. Additionally, the inclusion of a “.com” gTLD is irrelevant for this analysis. Therefore, the Panel finds that Respondent’s <simplymadecookies.com> domain name is confusingly similar to Complainant’s SIMPLY MADE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <simplymadecookies.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <simplymadecookies.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “11th Street Domains” as the registrant. There is nothing in the record to show that Respondent has ever been legitimately known by the SIMPLY MADE mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <simplymadecookies.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <simplymadecookies.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent has failed to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a domain name containing a mark to which a complainant has rights to resolve to content unrelated to the complainant demonstrates a lacks of rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) 7 (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use . . .”). Complainant has also provided evidence that Respondent’s <simplymadecookies.com> domain name previously resolved to a site containing a pre-configured search on BING for the phrase “genetic enjineered cookies” and displays a variety of content/videos that are unrelated to Complainant’s business. Complainant has also shown that the domain name currently resolves to a webpage hosting a pre-configured search on BING for the phrase “ed schultz news today 2017” which is also unrelated to Complainant’s business. Therefore, the Panel finds that Respondent failed to use the <simplymadecookies.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <simplymadecookies.com> domain name in bad faith by disrupting Complainant’s business. Use of a confusingly similar domain name to attract Internet users and disrupt a complainant’s business indicates bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). Complainant has provided evidence that Respondent’s domain name resolves to a website that contains a search engine with a pre-configured search query of “ed schulz news today 2017” and displays unrelated content. This amounts to bad faith per Policy ¶ 4(b)(iii).
Complainant argues Respondent had actual knowledge of Complainant's rights in the SIMPLY MADE mark prior to registration of the <simplymadecookies.com> domain name. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name because the domain name incorporates the mark precisely and adds a generic term directly related to Complainant’s business. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel agrees with Complainant and finds Respondent acted in bad faith by its registration and use of the <simplymadecookies.com> domain name.
The Panel finds 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 <simplymadecookies.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: December 11, 2017
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