Kellogg North America Company v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1911001869788
Complainant is Kellogg North America Company (“Complainant”), represented by James K. Lewis of Kellogg Company, Michigan, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <incogmeato.com>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2019; the Forum received payment on November 5, 2019.
On November 5, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <incogmeato.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@incogmeato.com. Also on November 8, 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 December 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 submits that it was founded in 1906 and has grown to currently have annual sales of its breakfast foods, snacks, frozen foods and beverages in in excess of $13 billion in more than 180 countries and claims rights in the INCOGMEATO trademark acquired through its ownership of its United Kingdom trademark registration, its pending trademark registrations.
Complainant submits that the fact that the disputed domain name was registered prior to the registration of Complainant’s trademark does not have any impact on the first element of the test that it must meet in Policy ¶ 4(a)(i) because the requirement is that Complainant’s rights must be in existence on the date that the Complaint was filed. In this regard Complainant cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0” ) at ¶ 1.1.3: “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”.
Complainant requests this Panel to note that the disputed domain name was created one day after Complainant filed its section 1(b) Intent to Use (ITU) trademark application with the USPTO and on the same day Complainant filed one of its trademark applications with the UKIPO.
Complainant submits that the disputed domain name is identical to Complainant’s INCOGMEATO trademark because it consists solely of Complainant’s mark in its entirety together with the gTLD <.com> extension which may be ignored for the purpose of comparison. In this regard Complainant cites the decision of the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain name extension, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. Complainant argues that its United Kingdom trademark registration is prima facie evidence of its ownership of INCOGMEATO trademark; that Respondent is not sponsored by or affiliated with Complainant in any way; that Complainant has not licensed, authorized, or permitted Respondent to use its trademark or register domain names incorporating Complainant’s trademark in any manner; that Respondent is not commonly known by the disputed domain name; that the Whois information suggests that Respondent is known as “Super Privacy Service LTD c/o Dynadot,” which does not resemble the disputed domain name in any manner.
Furthermore, Complainant argues that at the time of filing of the Complaint, Respondent was using a privacy WHOIS service, which past panels have also found to equate to a lack of legitimate interest. See Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, D2011-1855 (WIPO Dec. 23, 2011) “The Panel concludes that the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the “Private Whois” registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name ”.
Complainant further submits that Respondent is making unauthorised use of its trademark in the disputed domain name to redirect internet users to a website featuring links to third-party websites. Complainant submits that these are presumably pay-per-click links from which Respondent receives revenue. Complainant submits that prior decisions of panels established under the Policy have consistently held that such use does not constitute a bona fide offering of goods or services or a non-commercial or fair use that would give rise to rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), citing H-D Michigan Inc. v. Buell, FA 1106640 (NAF Jan. 2, 2008) (As the “respondent’s disputed domain name s resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use).
Additionally, Complainant asserts that prior to receiving a cease and desist letter from Complainant, Respondent has been offering to sell the disputed domain name and Complainant argues that Respondent’s offer to sell the disputed domain name serves as further evidence of Respondent’s lack of rights and legitimate interests.
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that the timing of the registration along with the composition of the domain makes it illogical to believe that Respondent registered the domain without specifically targeting Complainant.
Respondent registered the disputed domain name on July 16, 2019, which is one day after Complainant filed its section 1(b) ITU application with the USPTO and the exact same day Complainant filed its UK application (no. 3414285) with the UKIPO.
Also the disputed domain name is solely comprised of Complainant’s INCOGMEATO trademark, which is a coined term formed by combining the words “incognito” and “meat”. Complainant submits that Respondent has therefore demonstrated a knowledge of and familiarity with Complainant’s brand and business.
Complainant submits that in the light of these facts it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Furthermore Complainant submits that, where, as in the present case, a disputed domain name encompasses Complainant’s INCOGMEATO trademark in its entirety, “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).
Complainant argues that the creation of the disputed domain name in these circumstances coinciding with the timing of Complainant’s trademark filings, strongly suggests that Respondent knew of Complainant and registered the disputed domain name with full knowledge of Complainant’s trademark filings, or was monitoring the USPTO and/or UKIPO for recently added marks and then filing corresponding domain names incorporating said marks.
Complainant argues that in either case, Respondent’s purpose was to block Complainant from registering domain names containing its mark and to potentially profit from the sale of the disputed domain name. Previous panels have held that registration of a domain name related to and shortly after the filing of a trademark application constitutes opportunistic bad faith registration. See Amazon.com, Inc. and Amazon Technologies, Inc. v. shi lei, FA 1568713 (NAF Aug. 15, 2014) (Respondent’s registration of <amazonfirephone.us> within days of initial reports regarding Complainant’s new smartphone and on the same day that Complainant filed for registration of the AMAZON FIRE mark provides evidence of opportunistic bad faith). See also Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram, D2010-1963 (WIPO Jan. 12, 2011) (finding bad faith registration of the domain name <kena.com> when the filing of complaint’s ITU application preceded registration of the disputed domain name).
Complainant submits that pertinent to its case WIPO Jurisprudential Overview 3.0, states that “where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name following the complainant’s filing of a trademark application.
Complainant adds that Respondent’s endeavours to sell the disputed domain name and its presumed use of the disputed domain name to generate revenue by pay-per-click links are indicative of bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a multinational food manufacturing company and is the owner of United Kingdom trademark INCOGMEATO registration number UK00003414285 registered on 11 October 2019 for goods in class 29, the application having been filed on 16 July 2019 and has pending applications for registration of the INCOGMEATO mark in trademark applications in the United States and Canada:
U.S. Trademark Application number 88514887 filed on July 15, 2019 for goods in International class 29;
Canadian Trademark Application number 1980488 filed on August 14, 2019 for goods in class 29; and
United Kingdom Trademark Application number UK0000342821 filed on September 12, 2019 for goods in class 29.
The Complainant has an established Internet presence to promote its food business and owns the domain names <kelloggs.com> created on August 18, 2019 and <kelloggcompany.com> registered on December 15, 2002, each of which resolves to Complainant’s principal website.
The disputed domain name <incogmeato.com> was registered on July 16, 2019. The registrant has used a privacy service to conceal his name.
The disputed domain name resolves to web pages one of which appears to be a holding page maintained by the privacy service provider which contains inter alia a statement: “An agreement has been reached for INCOGMEATO.COM. The domain is pending sale” The other page also has the name and logo of the privacy service provider below which there are what appear to be a number of links to topics relating to medical conditions and treatments with a background graphic of a silhouette of a group of people in a rural or beach setting.
There is no information available about Respondent except for that provided in the Complaint, and the Registrar’s response to the Forum’s request for verification of the registration details in the course of this Complaint. Respondent’s name does not appear on the Registrar’s WhoIs.
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”).
The evidence adduced by Complainant has satisfied this Panel that it has rights in the INCOGMEATO trademark established by its abovementioned United Kingdom trademark registration.
While the disputed domain name was registered on July 16, 2019, prior to the grant of the Complainant’s United Kingdom trademark registration on 11 October 2019, this Panel accepts that the relevant date for purposes of Policy ¶ 4(a)(i) for a complainant to establish rights in a mark is the date of filing of the complaint. See the WIPO Jurisprudential Overview 3.0 which states at ¶ 1.1.3:
1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.
The disputed domain name <incogmeato.com> is identical to Complainant’s trademark. In the circumstances of this case the gTLD <.com> extension may be ignored for the purposes of comparison.
This Panel finds that the disputed domain name is identical to the trademark INCOGMEATO in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered on July 16, 2019, which was one day after Complainant filed its section 1(b) ITU application with the USPTO and the exact same day Complainant filed its UK application (no. 3414285) with the UKIPO. There is no evidence of any use of the word “incogmeato” by Respondent prior to the registration of the disputed domain name.
Furthermore, Respondent is not sponsored by or affiliated with Complainant in any way; Complainant has not licensed, authorized, or permitted Respondent to use its trademark or register the disputed domain name incorporating Complainant’s trademark in any manner; Respondent is not commonly known by the disputed domain name; the Whois information suggests that Respondent is known as “Super Privacy Service LTD c/o Dynadot,” which does not resemble the disputed domain name in any manner.
Additionally Respondent’s identity was concealed by using a privacy WHOIS service on the evidence before this Panel it appears that Respondent is using the disputed domain name to redirect internet users to a website featuring links to third-party websites. While neither use of a privacy service to conceal identity nor the use of a domain name to generate revenue are objectionable in themselves, in the circumstances of the present case are evidence of any bona fide, noncommercial or fair use of the disputed domain name and they are indicators that Respondent has no rights or legitimate interest in the disputed domain name.
In these circumstances it is well established that the burden of production shifts to Respondent to establish rights or legitimate interests.
Respondent has not filed any Response and has failed to discharge the burden of production.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
As set out above the disputed domain name was registered immediately after it became publicly known that Complainant’s intention to register the had applied to register INCOGMEATO as a trademark. The WIPO Jurisprudential Overview 3.0 at ¶ 3.8.2 addresses the situation where domain names are registered in anticipation of trademark rights and states:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Given that “incogmeato” is a distinctive, coined word, the coincidence of the registration of the disputed domain name and publication of Complainant’s interest in registering the INCOGMEATO trademark, the fact that the disputed domain name was registered using a privacy service and offered for sale without being put to any bona fide commercial or other noncommercial or fair use, this Panel must conclude that the disputed domain name was registered to target Complainant’s interests and to unfairly capitalize on Complainant’s nascent rights in the, as yet unregistered mark.
This is a situation which is within the exceptions to the principle expressed in the WIPO Jurisprudential Overview 3.0 at ¶ 3.8.1 that panels will not normally find bad faith on the part of the respondent where a respondent registers a domain name before the complainant’s trademark rights accrue.
In the circumstances this Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded also in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <incogmeato.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________
JAMES BRIDGEMAN SC
Panelist
Dated: December 4, 2019
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