NATIONAL ARBITRATION FORUM
URS FINAL DETERMINATION
Kraft Foods Group Brands LLC v. Domains By Proxy, LLC et al.
Claim Number: FA1409001581977
DOMAIN NAME
<maxwell-house.coffee>
PARTIES
| Complainant: Kraft Foods Group Brands LLC of Northfield, IL, United States of America | |
| Respondent: Jawal Nga of Brooklyn, NY, United States of America | |
REGISTRIES and REGISTRARS
| Registries: Trixy Cover, LLC | |
| Registrars: Godaddy LLC |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: September 26, 2014 | |
| Commencement: September 26, 2014 | |
| Default Date: October 13, 2014 | |
| Response Date: October 13, 2014 | |
| Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear an convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. The Complainant’s basis for asserting this complaint is its use and ownership of the MAXWELL HOUSE trademark in the United States and elsewhere, which has been in continuous use for in excess of 100 years (by itself and through predecessors in title). The brand is extremely well-known in the coffee business with annualized sales in excess of $500,000,000. The Complainant holds the valid trademark registrations for the MAXWELL HOUSE marks which are recognized by the USPTO as the word marks, though there is some stylizing (U.S. Reg. no. 0,599,153, registration date December 7, 1954, first use in commerce May 17, 1914; U.S. Reg. no. 4,203,390, registration date September 4, 2012, first use in commerce July 18, 2011). The Complainant contends that the Respondent does not have any legitimate right or interest to the domain name <maxwell-house.coffee> which registered and used by the Respondent in bad faith. The Respondent submitted the late URS Response which shall be treated as being timely under URS 6.5. The Response provides additional information for the Respondent, but the facts section of the Response contains no substantive defense. |
|
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <maxwell-house.coffee> fully incorporates the word mark MAXWELL HOUSE for which the Complainant holds valid national registration and that is in current use. The Examiner finds registered MAXWELL HOUSE marks visually similar with the domain name <maxwell-house.coffee> because there was no high variation in the stylisation of the word marks registered by the Complainant. At the same time, the Complainant’s registered word marks are phonetically and semantically identical to the domain name <maxwell-house.coffee>. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus “.coffee” is of no consequence here. Respectively, the Examiner finds that the domain name <maxwell-house.coffee> is misleadingly similar with the Complainant’s MAXWELL HOUSE mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the MAXWELL HOUSE name and the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s MAXWELL HOUSE mark in a domain name or otherwise. The domain name is neither generic nor descriptive. Post parking page would not of itself confer rights or legitimate interest arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name. In light of that the Examiner does not admit the legitimate interest of the Respondent to use a trademark that belongs to a third party. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location. The domain is connected with the MAXWELL HOUSE combined with the suffix ”coffee”. The domain name <maxwell-house.coffee> was created on June 1, 2014, being long after Kraft acquired rights to the MAXWELL HOUSE trademark with coffee products. Not only is the domain name clearly confusing with the Complainant’s well-known MAXWELL HOUSE mark extensively used on coffee products, the fact that the mark is also used in association with the .coffee extension only further contributes to the confusion in the minds of consumers with the Complainant’s mark and business. The Complainant’s MAXWELL HOUSE mark was entered into The Trademark Clearinghouse prior to the filing of the subject domain name. Thus, the Registrant adopted its domain with the full knowledge of the Complainant’s prior rights to the trademark. The records of the case do not provide any evidence whatsoever of any actual or contemplated good faith use by the Respondent of the domain name. The Examiner further determines that by providing “payperclick” links to other third party sites to generate “payperclick” revenue from internet traffic that visits a webpage to which a domain name <maxwell-house.coffee> resolves the Respondent has intentionally attempted to attract for commercial gain Internet users to the Registrant’s web site, by creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation. Thus, the Examiner finds such behavior to evidence the Respondent’s bad faith registration and use under URS 1.2.6.3.(d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Ms. Kateryna Oliinyk
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