DECISION

 

Kellanova v. Francis Giroud

Claim Number: FA2403002087260

PARTIES

Complainant is Kellanova ("Complainant"), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is Francis Giroud ("Respondent"), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pringles.ai>, registered with NameCheap, Inc.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 6, 2024; Forum received payment on March 6, 2024.

 

On March 6, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <pringles.ai> 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 March 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 1, 2024 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@pringles.ai. Also on March 11, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, formerly known as the Kellogg Company, is one of the nation's largest food manufacturing companies. It has rights in the PRINGLES mark based upon its registration of that mark with the USPTO, which it has used for its famous Pringles potato chips and is currently using or planning to use in connection with its sale of crypto collectibles in the nature of downloadable image files of food authenticated by non-fungible tokens.  It has rights in the PRINGLES mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and other governmental trademark agencies. Respondent's domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the mark, merely adding the ".ai" generic top level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead previously used it to drive internet traffic to Respondent's website which impersonated and competed with Complainant and is presently using it to host hyperlinks to sites that offer cryptocurrency and financial tokens, all of which are marketed and sold using Complainant's mark, it is not affiliated with Complainant and Complainant has not authorized Respondent to use its PRINGLES mark, and Respondent is not commonly known by the domain name.

 

Respondent registered and uses the domain name in bad faith. It registered the domain name with actual knowledge of Complainant and its mark, it previously used it to attract for commercial gain Internet users to its website by creating confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website and is presently using it to host hyperlinks to sites that offer cryptocurrency and financial tokens, all of which are marketed and sold using Complainant's mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. 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). Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

The PRINGLES mark, consisting of the word PRINGLES with an image of the "Mr. P" mascot, a round face, large bushy mustache, raised eyebrows and bow tie, was registered to Complainant with the USPTO (Reg. No. 6,708,351) on April 19, 2022 (USPTO registration certificate included in Exhibit A to Declaration of Complainant's Global Corporate Counsel, Intellectual Property [the "Lewis Declaration"]).  Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). 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)."), 

 

Respondent's domain name is identical or confusingly similar to Complainant's mark. It fully incorporates the PRINGLES mark, merely adding a gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name, and the domain name is likely to cause confusion.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead previously used it to drive internet traffic to Respondent's website which impersonated and competed with Complainant and is presently using it to host hyperlinks to sites that offer cryptocurrency and financial tokens, all of which are marketed and sold using Complainant's mark, (ii) it is not affiliated with Complainant and Complainant has not authorized Respondent to use its PRINGLES mark, and (iii) Respondent is not commonly known by the domain name.  These allegations are addressed as follows:

 

Exhibit B to the Declaration of one of Complainant's attorneys (the "Hofstatter Declaration") is a screenshot of the website previously resolving from the domain name. It prominently featured the wording "Pringles" in numerous locations, and displayed multiple versions of Mr. P. The header consisted of a scrolling red banner that followed down the page, and featured the classic PRINGLES logo, composed of the Mr. P. design and the word PRINGLES.  The PRINGLES logo was altered to expand the bowtie of Mr. P and to add to letters "AI" under the word "PRINGLES."  The body of the webpage consisted of a large image of the head of Mr. P, with his bow tie removed, alongside a block of text featuring the words "CRUNCHY WORLD WITH $PRINGLES" in large font. Underneath it was the wording: "Pringles AI is a meme coin that not only entertains but also transforms the world of cryptocurrencies. Embrace the future of smart and humorous investing. Join $Pringles AI for an exhilarating experience in the realm of digital assets."  Underneath this text was a link to "Buy $PRINGLES NOW". Further down the page was a series of links to crypto token purchasing web websites, including DEXTOOLS, UNISWAP, DEXSCREENER and GECKOTERMINAL. Attached to the Hofstatter Declaration as Exhibit C are screenshots of the webpages to which these links resolved, advertising the Pringles AI cryptocurrency.

 

Although historically associated most closely with food products, Complainant is venturing into the crypto currency universe by offering a variety of goods and services which include "crypto collectibles in the nature of downloadable image files of food authenticated by non-fungible tokens (NTFs)" and "Providing online virtual reality game services featuring crypto tokens for use in virtual worlds" (Lewis Declaration ¶17).

 

Respondent's web pages clearly represented that they were sponsored or at a minimum approved by Complainant. Respondent was passing off as Complainant or an affiliate and to the extent that Respondent actually provided the services advertised it was in at least some form of competition with Complainant's cryptocurrency products and services.  Using a confusingly similar domain name to impersonate and pass off as and sell the same types of services as a complainant does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).").

 

The Complaint alleges that the registrar at some unstated time took down Respondent's website as described above at the request of Complainant and that the domain name presently resolves to a website that hosts links to services that directly capitalize on the goodwill associated with Complainant's mark. The Complaint alleges that this use is described in and evidenced by exhibits attached to the Hofstatter Declaration but that declaration appears to address only the website that existed prior to the take-down. In any event, the earlier website contained what are presumed to be pay-per-click links to other sites that infringed on Complainant's trademark rights. Using a confusingly similar domain name to host commercial pay-per-click schemes is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) ("Respondent's demonstrated intent to divert Internet users seeking complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)"), Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

The evidence of Respondent's previous use of the domain name to host pay-per-click links corroborates and supports Complainant's allegations that Respondent is presently using the domain name for the same purposes. Those allegations are not disputed and are accepted as true.

 

Complainant states that Respondent is not affiliated with it and that it has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), 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.").

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. That name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a name other than the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complainant has made its prima facie case. On the evidence discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent used the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites, as described in Policy ¶ 4(b)(iv). The evidence does not disclose whether Respondent actually offered the services advertised on its website or fraudulently represented that it did, collecting money from the customer and then not delivering the services. Regardless which scenario is present here, its conduct fit squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Next, as discussed above, Respondent used the domain name to pass off as Complainant or an authorized affiliate. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Also as discussed above, Respondent previously used and is presently using the domain name to host a pay-per-click site. This also equates to its using the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to the site clicks on one of the links which appear there, the site sponsor receives compensation from the various web site owners who are forwarded from the site. In most cases, the site sponsor receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent's web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name. In order to pass off as Complainant or an affiliate on its website, using its stylized mark and logo, Respondent had to have had actual knowledge of Complainant and its mark. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  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).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pringles.ai> domain name be TRANSFERRED from Respondent to Complainant.

 

Charles A. Kuechenmeister, Panelist

April 4, 2024