Cargill Incorporated v. Sunny Fresh Cleaners
c/o Gar Benedick
Claim Number: FA0607000747941
PARTIES
Complainant is Cargill, Incorporated (“Complainant”), represented by William Schultz, of Merchant & Gould PC, Suite 3200, 80 South Eighth Street, Minneapolis, MN 55402. Respondent is Sunny Fresh Cleaners c/o Gar Benedick (“Respondent”), represented by Gar Benedick 24292 Andrea Street, Laguna Hills, CA 92656.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunnyfresh.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 13, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 14, 2006.
On July 17, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <sunnyfresh.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. 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 27, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 16, 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@sunnyfresh.com by e-mail.
A timely Response was received and determined to be complete on August
16, 2006.
On August 21, 2006, an Additional Submission was received from Complainant
in compliance with Supplemental Rule 7.
This Additional Submission was received timely.
On August 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
On August 28, 2006, an Additional Submission was
received from Respondent in compliance with Supplemental Rule 7. This Additional Submission was received
timely.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <sunnyfresh.com> domain name is identical and confusingly similar to Complainant's mark.
2. Respondent has no
rights or legitimate interest in the <sunnyfresh.com> domain name.
3. Respondent has
registered and used the <sunnyfresh.com> domain name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request as to the <sunnyfresh.com>
domain name.
Despite Enom, Inc.’s confirmation mentioned above, in its Response,
Respondent states that another party, Admin Manager, holds control of the
registration account for the <sunnyfresh.com> domain name. Respondent therefore also requests the Panel to award the <sunnyfresh.com>
domain name to Respondent in
order to give full “ownership” of the <sunnyfresh.com> domain name to Respondent.
C. Additional Submissions
In response to Respondent’s statement regarding the question what party
holds control of the registration account for the <sunnyfresh.com>
domain
name, Complainant, in its Additional
Submission, requests the Panel
to make a decision, taking into account that Admin Manager is the respondent.
In response to this Additional Submission of Complainant, Respondent
filed an Additional Submission in which Respondent withdraws its statements on
the control by Admin Manager.
FINDINGS
1. Complainant is Cargill, Incorporated, an international provider of food, agricultural and risk management products and services. Sunny Fresh Foods, Inc. is a wholly owned subsidiary of Cargill, Incorporated and is a leading supplier of high-quality, value-added egg products to the foodservice industry. Sunny Fresh Foods markets and sells its products throughout the United States under the trademark and trade name SUNNY FRESH with the permission of Cargill, the owner of the SUNNY FRESH Marks.
Complainant has demonstrated that it holds US trademarks in SUNNY FRESH for egg products and that it has used and still uses these trademarks.
2. Sunny Fresh Cleaners (hereinafter
"SFC") is a California Corporation and is a local provider of dry
cleaning services for the Southern California, Orange County area.
SFC has demonstrated that it holds a US
trademark in SUNNY FRESH
CLEANERS for dry cleaning and clothing laundry services and that it has used
and still uses this trademark.
3. The <sunnyfresh.com> domain name was originally owned by SFC from June 20, 2000 to September 7, 2005. SFC lost the domain name because of non-payment, as a result of a failure in the communication at the time of the domain name renewal, due to incorrect contact information with the registrar.
4. Admin Manager
became the new owner of the <sunnyfresh.com> domain name.
On September 13, 2005,
SFC discovered that the website at <sunnyfresh.com> was down. Later in that
year, SFC contacted Admin Manager with a view to reacquiring the <sunnyfresh.com> domain name. Admin Manager offered to sell the <sunnyfresh.com>
domain
name for $3,270.
SFC never initiated
proceedings with a view to recovering the <sunnyfresh.com> domain name.
5. In the present case,
Complainant originally filed a complaint against Admin Manager because, on July
13, 2006, when Complainant initially filed its complaint, Admin Manager was
listed as the registrant of the <sunnyfresh.com> domain name.
6. Immediately after the
complaint was filed, Admin Manager amended the contact information to SFC and
linked the <sunnyfresh.com> domain name to SFC’s
website located at <sunnyfreshcleaners.com>.
SFC contacted Admin
Manager who was prepared to give full control of the registration account to
SFC for $3,270.
7. Following a
communication of the National Arbitration Forum (“NAF”) on 24 July 2006,
Complainant filed a revised complaint on 27 July 2006 and mentioned SFC as
Respondent.
The day before the
filing of the revised complaint, on 26 July 2006, Complainant attempted to
settle the dispute and invited Admin Manager and SFC to sign a transfer
agreement.
In its Response, SFC addressed the question on the ownership of the <sunnyfresh.com> domain name. SFC is of the opinion that Admin Manager still holds control of the registration account for the <sunnyfresh.com> domain name, even though it changed the registration ownership to SFC. SFC argues that it did not and has not had control of the <sunnyfresh.com> domain name ever since Admin Manager purchased the domain name on September 7, 2005.
In its Additional Submissions,
Complainant equally addressed the ownership question. Complainant argues that,
despite the appearance that the domain
name is owned by SFC, Admin Manager maintains control of the domain name.
Complainant requests the Panel to make a decision, taking into account that
Admin Manager is the Respondent.
In its Additional Submissions, SFC came back on its position in the
Response and claims that it effectively controls the <sunnyfresh.com> domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Preliminary Issue: Ownership of the Disputed Domain Name
Registration
The Panel finds that the parties have initially exchanged concurring
views on the control issue, i.e.,
Complainant and SFC have developed an equal position and sustain that Admin
Manager is in control of the <sunnyfresh.com> domain name.
Initially, Complainant was right to file the original complaint against Admin Manager. NAF’s Supplemental Rule 1(d) (first part) indeed states that the holder of a domain name registration is “the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum.” Nat. Arb. Forum Supp. Rule 1(d) (emphasis added).
However, NAF’s Supplemental Rule 1
(d) (second part) also states that the holder of a domain name registration is
“the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with
the Forum; and once the registrar has verified registration, is limited to
the single person or entity as verified by the registrar.” Nat. Arb. Forum Supp. Rule 1(d) (emphasis
added).
In the present case, Enom, Inc. has confirmed that the Respondent
is the current registrant of the domain name.
SFC is, thus, the Respondent in this case.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(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.
Complainant asserts and provides evidence of several federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SUNNY FRESH mark. Prior panels have held that a complainant’s registration of a mark with the USPTO satisfies the Policy ¶ 4(a)(i) requirement that a complainant must demonstrate rights in a mark. In Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003), the panel found that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). Moreover, in Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006), the panel held that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i).
Therefore, in the present case, the Panel finds that Complainant has established rights in the SUNNY FRESH mark in accord with Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO.
The Panel adds that Complainant’s rights in the SUNNY FRESH mark are not contested.
The next step that needs to be undertaken is
the comparison between the disputed domain name and the right of Complainant,
and not – as SFC had argued erroneously – the comparison between the disputed
domain name and the alleged right of the holder of the disputed domain name,
the latter right being only relevant in the analysis of the second element of ¶ 4(a) of the Policy.
The <sunnyfresh.com> domain name is
undoubtedly identical to Complainant’s SUNNY FRESH mark pursuant to Policy ¶
4(a)(i). As Complainant contends, the
domain name consists of Complainant’s registered mark in its entirety, with the
omission of a space between the words constituting the mark, and the addition of
the generic top-level domain (“gTLD”) “.com.”
However, as has been ruled in numerous domain name decisions, the suffix
“.com” is irrelevant for the present analysis.
The Panel adds that
Complainant’s claim that the <sunnyfresh.com> domain name is
identical to Complainant’s SUNNY FRESH mark is not contested.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests with respect
to the disputed domain name under Policy ¶ 4(a)(ii). However, once Complainant sufficiently demonstrates a prima facie case, the burden of proof then shifts to Respondent to show that it
has rights or legitimate interests in the disputed domain name. See 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”); see also
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or
legitimate interests in respect of the Domain Name requires the Complainant to
prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.”).
Complainant contends that it has not
licensed Respondent to use the SUNNY FRESH mark. Also, Respondent is not commonly known by the mark of
Complainant. In Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate
interests where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name. Moreover, the panel in M.
Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb.
Forum Aug. 3, 2006), found that the respondent was not commonly known by the
<cigaraficionada.com> domain name because the WHOIS information listed
the registrant of the domain name as “WORLDTRAVELERSONLINE.COM,” and no other
evidence existed in the record indicating that the respondent was known by the
domain name.
The Panel finds that Respondent is not
commonly known by the <sunnyfresh.com> domain name
pursuant to Policy ¶ 4(c)(ii).
The Panel notes that, when it had lost the domain name, Respondent
never filed a complaint and never initiated any other proceedings in order to
obtain the transfer by Admin Manager.
For the sake of
completeness, the Panel adds that the use and the duration of the use of the <sunnyfresh.com> domain name by
whoever since May 1, 1991 are irrelevant in the present analysis. Also, effective use of a disputed domain
name as well as the absence of a filing of a complaint immeditely following the
registration of the domain name or soon thereafter, cannot justify the
existence of a right or a legitimate interest related to the domain name. The latter need to be demonstrated by all
means except if such means are related to the use of the domain name in either
an e-mail address or an URL. Indeed,
the right to the use in an e-mail address or in an URL is precisely the issue
that is at stake in a domain name complaint.
Also, it is irrelevant to know when a complaint is filed. It is immaterial to know when a complainant
discovered the contested registration or use of the domain name.
The Panel finds that Respondent registered and used the <sunnyfresh.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent had constructive notice of Complainant’s rights in the SUNNY FRESH mark prior to Respondent’s registration of the disputed domain name. In Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), the respondent registered the <digidis.com> domain name at least thirteen years after the complainant registered its DIGI mark on the Principal Register of the United States Patent and Trademark Office (“USPTO”). As a result of the complainant’s longstanding rights in the DIGI mark with the USPTO prior to the respondent’s registration of the disputed domain name, the panel found, “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”
In the present case, Complainant avers and submits evidence indicating that it has held federal trademark rights in the SUNNY FRESH mark on the Principal Register of the USPTO since at least as early as 1994. Moreover, Complainant asserts that a search of newspaper or magazine articles would have clearly revealed numerous articles regarding Complainant’s use of the SUNNY FRESH mark in connection with its offering of egg products.
Consequently, the Panel finds that when Respondent registered and subsequently reacquired the <sunnyfresh.com> domain name it possessed constructive knowledge of Complainant’s rights in the SUNNY FRESH mark. Therefore, consistent with the holding of the panel in Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), the Panel finds that Respondent’s constructive knowledge of Complainant’s longstanding trademark rights in the SUNNY FRESH mark indicate that Respondent registered and used the <sunnyfresh.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Furthermore, the Panel finds the
holding of Victoria’s Cyber Secret Ltd. v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001), to be persuasive in stating, “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072.
In the present case, Complainant asserts with evidentiary support its registration of the SUNNY FRESH mark on the Principal Register of the USPTO. Therefore, the Panel finds that Complainant’s trademark registration on the Principal Registrar further supports the fact that Respondent had constructive knowledge of Complainant’s rights in the SUNNY FRESH mark when Respondent registered and used the disputed domain name.
Additionally, in eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001), the panel found that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website. Similarly, in AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), the panel found that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Consequently, the Panel finds that in light of Complainant’s continuous and extensive use of the SUNNY FRESH mark in its offering of egg products, as well as the identical nature of the <sunnyfresh.com> domain name to the aforementioned registered mark, Respondent registered and used the disputed domain name with the intent to divert Internet users to Respondent’s website for commercial gain. Thus, the Panel concludes that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Last, the Panel finds that Respondent registered and used the disputed domain name in bad faith based upon the totality of circumstances of the case. In Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000), the panel stated, “[t]he requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.” Moreover in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel found, “the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”
Therefore, based upon the circumstances present in the instant case, the Panel concludes that Respondent registered and used the <sunnyfresh.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunnyfresh.com>
domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: September 18, 2006
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