Campbell Soup Company v. iCapital Holdings
Claim Number: FA0607000743681
Complainant is Campbell Soup Company (“Complainant”), represented by Michael B. Stewart, of Rader, Fishman & Grauer PLLC, 39533 Woodward Avenue, Bloomfield Hills, MI 48304. Respondent is iCapital Holdings (“Respondent”), 1224 W. First Street, Winston-Salem, NC 27101.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <campbells.com>, registered with Bulkregister, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Carol M. Johnson, Jeffery M. Samuels and Steven L. Schwartz, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2006.
On July 5, 2006, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <campbells.com> domain name is registered with Bulkregister, LLC. and that Respondent is the current registrant of the name. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@campbells.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2006 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carol M. Johnson, Jeffery M. Samuels and Steven L. Schwartz, Chair. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <campbells.com> domain name is identical to Complainant’s CAMPBELL'S mark.
2. Respondent does not have any rights or legitimate interests in the <campbells.com> domain name.
3. Respondent registered and used the <campbells.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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."
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(e), 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 and does accept all reasonable allegations and inferences set forth in the Complaint as true there being no evidence clearly to the contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
DISCUSSION
Complainant and its related companies (Campbell) is a world leader in the manufacturing and marketing of easy-to-prepare foods, including soups, baked snacks, vegetable-based beverages, and premium chocolate products. Campbell provides more than 3,000 product varieties in more than 120 countries throughout the world.
Campbell’s rights in the name and mark CAMPBELL’S (the “CAMPBELL’S mark”) is Campbells’ trade name and primary trademark. Campbell owns the domain registration for <campbellsoup.com>, which Campbell registered on July 10, 1996. Campbell has continually used the domain registration and the associated web site since at least as early as December 1997 to promote its globally-recognized products and to provide consumers with access to product information 24 hours a day. Campbell also owns the domain registration for <campbellsoupcompany.com>, which it registered on July 26, 2002.
Campbell has expended substantial time, effort and resources to develop its web site as an online information source, containing details about the company and its products as well as recipes, food ideas and tips, nutrition and wellness information, and resources for participants in Campbell’s “Label for Education” school fundraising program.
Respondent owns over 1,000 domain name registrations for various terms, including numerous registrations comprising or containing third party names and trademarks including <blackhawks.com>, <bloomingdale.com> and <redwings.com>. Respondent apparently uses these domains and the associated web sites to advertise or promote goods or services bearing a strong relationship to the true owner of the name or mark.
Complainant first became aware in approximately December 2004 that the domain name <campbells.com> had been registered by Respondent. At that time the URL <campbells.com> redirected to a web site at <cocom.com> operated by Respondent. Subsequently, the web site to which <campbells.com> resolved was modified to contain information traditionally associated with Campbell, including such categories as “weight loss diet,” “culinary school,” “fitness program,” “kitchen designers” and links to third party web sites. Much of the information from these sites overlaps with the information contained on Campbell’s own web sties.
In February 2006, Complainant’s counsel sent a letter to Respondent complaining of Respondent’s infringing activities and proposing a resolution. The letter was delivered to February 17, 2006 to Respondent personally but no reply was forthcoming.
Complainant contends that Respondent derives revenue from the disputed domain name via click through referrals and is obtaining commercial gain therefrom.
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.
Complainant asserts and submits extrinsic evidence to support that it holds numerous trademark registrations in numerous countries around the world, including the CAMPBELL’S mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,839,540 issued June 14, 1994). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent registered its domain name <campbells.com> over a century after Complainant had established rights in the CAMPBELL’S mark. Respondent’s domain name is nearly identical and confusingly similar in sight, sound, and appearance to Complainant’s CAMPBELL’S mark. The Panel also finds that the disputed domain name is identical to Complainant’s mark because it contains Complainant’s mark in its entirety and merely removes the apostraphe. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). Cf. Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
Moreover, the Panel finds that the addition of the generic top-level domain “.com” in the domain name is irrelevant in determining whether the domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).
Complainant,
in accordance with Policy ¶ 4(a)(ii), must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name before the burden shifts to Respondent. If Complainant successfully
shifts the burden, Respondent must come forth with evidence to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
In light of Respondent’s failure to file a reply in this matter and there being no evidence introduced that is otherwise clearly contrary to Complainant’s evidence in this matter, the Panel is entitled to and does accept all reasonable allegations and inferences set forth in the Complaint as true
Complainant argues that Respondent’s
use of the disputed domain name to resolve to a website that features a number
of sponsored links neither amounts to a bona fide offering of goods or
services nor a legitimate noncommercial use.
The Panel finds that Respondent’s use of the disputed domain name does
not fulfill the elements of Policy ¶4(c)(i) as a bona fide offering of
goods or services or Policy ¶ 4(c)(iii) as a legitimate noncommercial use
because it merely redirects Internet users to Respondent’s portal website that
features sponsored links from which Respondent presumably receives commercial
benefit. See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see
also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June
12, 2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
Complainant also asserts
that Respondent is not commonly known by the <campbells.com> domain name. The
Panel concludes that Respondent is not commonly known by the disputed domain
name because the WHOIS registry lists “iCapital Holdings” as the registrant and
there is no other evidence in the record to suggest otherwise. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”).
Complainant
contends that Respondent registered and used the disputed domain name in bad
faith by redirecting Internet users to its website and third party websites
where sponsored links are featured and Respondent receives monetary
compensation in return. Accordingly,
the Panel finds that Respondent’s use of the identical disputed domain name may
cause confusion as to Complainant’s sponsorship of or affiliation with the
resulting website and evidences bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and likeness); see also Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
Additionally, because Respondent’s domain name incorporates
Complainant’s mark, it creates confusion as to Complainant’s possible
affiliation with the disputed domain name and resulting website. Consequently, Respondent’s use of the
disputed domain name amounts to bad faith registration and use especially since
it likely profits from its diversionary use of the mark and the Respondent
fails to contest the complaint. See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <campbells.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Carol M. Johnson, Jeffery M. Samuels, Panelists and Steven L. Schwartz, Chair
Dated: August 25, 2006
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