Kellogg North America Company v. Steve Coles
Claim Number: FA1808001801425
Complainant is Kellogg North America Company (“Complainant”), represented by James K. Lewis, Michigan, USA. Respondent is Steve Coles (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kellogg-company.com> (the “Domain Name”), registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 15, 2018.
On August 15, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <kellogg-company.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2018 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@kellogg-company.com. Also on August 16, 2018, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Complainant’s contentions can be summarised as follows:
Complainant owns the trade mark KELLOGG’S registered, inter alia, in the USA for food goods, and used since 1907.
The Domain Name registered in 2018 is confusingly similar to the Domain Name. containing a misspelling of Complainant’s mark, omitting the apostrophe and an ‘s’ and adding only a hyphen, the descriptive word ‘company’ and the gTLD “.com,” which is not enough to distinguish the Domain Name from Complainant’s mark.
Respondent is not commonly known by the Domain Name and has not been authorised by Complainant to use Complainant’s mark. The Domain Name has been used to point to pay per click links including those referencing Complainant which is not a bona fide offering of goods or services or a non commercial legitimate and fair use.
The fact that the links attached to the Domain Name reference Complainant shows Respondent was aware of Complainant and Complainant’s business. Respondent has used a confusingly similar domain name to resolve to pay per click links intentionally attempting to attract Internet users to Respondent’s web site by creating a likelihood of confusion as to the source or affiliation of the web site and products on that web site contrary to Policy ¶ 4(b)(iv).
Respondent used a privacy service for a commercial site and did not answer Complainant’s cease and desist letter, which are both also indications of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the trade mark KELLOGG’S registered, inter alia, in the USA for food goods and used since 1907.
The Domain Name registered in 2018 has been pointed to pay per click links that reference Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name consists of a misspelling of Complainant's mark KELLOGG’S (which is registered, inter alia, in the USA for food products with first use recorded as 1907), omitting the apostrophe and an ‘s’ and adding a hyphen, the generic word ‘company’ and the gTLD “.com.”
Previous panels have found confusing similarity when a respondent merely adds generic terms to a sign confusingly similar to the complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that the respondent does not by adding common descriptive or generic terms create new or different marks).
The Panel agrees that the addition of a hyphen to a sign confusingly similar to Complainant's KELLOGG’S mark does not distinguish the Domain Name from Complainant's registered trade mark pursuant to the Policy. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003) (the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)).
The gTLD “.com” does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Panels have found that the addition or omission of punctuation and letters from a trade mark is not enough to distinguish the resulting domain name from the trade mark for a Policy ¶ 4(a)(i) analysis. See Google Inc. v N/A k gautam, FA 1524232 (Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark, the addition of a generic term and the addition of a gTLD).
Accordingly, the Panel holds that the Domain Name is confusingly similar to Complainant’s KELLOGG’S registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. There is no evidence or reason to suggest Respondent is commonly known by the Domain Name. The use is commercial, so it cannot be a legitimate non commercial fair use.
The web site attached to the Domain Name points to pay per click links referencing Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to a bona fide offering of goods and services. See Vance Int’l Inc v Abend, FA 0970871 (Forum June 8, 2007) (concluding that the operation of a pay per click web site at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate non commercial or fair use, regardless of whether or not the links resolve to competing or unrelated website or if the respondent is itself commercially benefitting from the click through fees.)
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it uses Complainant’s mark prominently without permission in a commercial pay per links context in relation to food goods. The fact that Complainant is referenced several times shows that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Univ of Houston Sys v Salvia Corp., FA 637920 (Forum Mar. 21, 2006).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras. 4(b)(iv) and 4(b)(iii) and there is no need to consider any further alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kellogg-company.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 10, 2018
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