Kellogg North America Company v. Kevin Andrew / Domains By Default
Claim Number: FA1907001851620
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Kevin Andrew / Domains By Default (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pringlesesports.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2019; the Forum received payment on July 11, 2019.
On July 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pringlesesports.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 July 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2019 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@pringlesesports.com. Also on July 16, 2019, 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 August 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 operates in the food industry, as well as in the eSports industry through its sponsorship of eSports teams. Complainant has rights in the PRINGLES trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 916,415, registered Jul. 13, 1971). Respondent’s domain name <pringlesesports.com> is identical or confusingly similar to Complainant’s PRINGLES trademark because it wholly incorporates the PRINGLES trademark, and merely adds the generic or descriptive term “esports” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <pringlesesports.com> domain name. Respondent is not authorized or licensed to use Complainant’s PRINGLES trademark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to host pay-per-click links. Respondent also has offered the domain for sale to a third party.
Respondent registered and uses the <pringlesesports.com> domain name in bad faith. Respondent registered the disputed domain name for the purpose of selling the same to a third party. Respondent has engaged in a pattern of bad faith registration by registering other domain names infringing on various famous marks. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates a likelihood of confusion and hosts pay-per-click links. Finally, Respondent had actual knowledge of Complainant’s PRINGLES trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 916,415 PRINGLES (word), registered July 13, 1971 for goods in class 29.
There are also valid PRINGLES trademark registrations in other countries, registered in the name of a sister company within the Kellogg group of companies.
Respondent registered the disputed domain name <pringlesesports.com> on May 16, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the PRINGLES trademark based upon registration with the USPTO (e.g., Reg. No. 916,415, registered Jul. 13, 1971). Registration of a trademark with the USPTO is sufficient to establish rights in the trademark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Based on the printout of the USPTO Trademark Electronic Search System (TESS), provided by the Complainant, the Panel finds that Complainant has rights in the PRINGLES trademark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <pringlesesports.com> is identical or confusingly similar to Complainant’s trademark as it wholly incorporates the PRINGLES trademark while adding the generic or descriptive term “esports” and the “.com” gTLD. The addition of generic or descriptive terms, and a gTLD to a complainant’s trademark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). 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 The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be identical or confusingly similar to the Complainant’s trademark PRINGLES.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <pringlesesports.com> domain name as Respondent is not authorized by Complainant to use the PRINGLES trademark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Kevin Andrew / Domains By Default”, and no information of the record indicates that Respondent was authorized to use the Complainant’s PRINGLES trademark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant alleges Respondent fails to use <pringlesesports.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to host pay-per-click links. Use of a domain name to host competing advertising links to products that compete with those of a complainant does not constitute a bona fide offering or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage featuring pay-per-click links for “Pringles Chips”, “Esports” and other related products. Therefore, the Panel finds that Respondent has failed to provide 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).
Additionally, Complainant alleges that Respondent has offered the disputed domain name for sale, and provides a screenshot of the disputed domain name’s resolving webpage where <pringlesesports.com> is offered for sale generally. Complainant also offers additional evidence that Respondent has offered the disputed domain for sale to a third party. An offer for sale provides additional evidence that a respondent lacks rights and legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant argues that Respondent registered and uses the <pringlesesports.com> domain name in bad faith because, as noted above, Respondent registered <pringlesesports.com> for the purpose of selling the disputed domain name to a third party. A respondent’s offer of a disputed domain name for sale can evince bad faith registration and use; furthermore, compensation does not need to be monetary. See Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Forum Dec. 29, 2000) (finding that the consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of Policy ¶ 4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name); see also Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Complainant also provides evidence that Respondent has offered the disputed domain for sale to a third party in exchange for “gaming equipment, esports jerseys, and other gaming accessories.” The Panel agrees with the Complainant, and finds that Respondent registered the disputed domain name for the purpose of selling the disputed domain name and this demonstrates bad faith per Policy ¶ 4(b)(i).
Complainant further asserts that Respondent registered and uses the <pringlesesports.com> domain name in bad faith because Respondent illustrates a pattern of bad faith registrations. Evidence that respondent owned various domain names infringing on famous third-party marks and previous adverse UDRP decisions can evince bad faith registration under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). The Complainant has provided a list of Respondent’s other domain names, clearly infringing on other third-party trademarks. The Panel therefore finds that Respondent has engaged in a pattern of bad faith registrations per Policy ¶ 4(b)(ii).
Next, Complainant argues Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent creates a likelihood of confusion and hosts pay-per-click links. A respondent’s use of advertisements to earn pay-per-click fees can evince bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Based on this statement, and the by Complainant provided screenshot of the disputed domain name’s resolving webpage, featuring pay-per-click ads, the Panel agrees finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the PRINGLES trademark as the result of Complainant’s extensive use of the trademark predating the date on which Respondent registered the <pringlesesports.com> domain name and Respondent’s use of the mark in the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a trademark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds, based on media abstract provided by the Complainant in combination with the construction of the disputed domain name as well as the use thereof, that Respondent had actual notice of Complainant’s rights in the PRINGLES trademark under 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 <pringlesesports.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 10, 2019
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