Tasty Baking, Co. & Tastykake
Investments, Inc. v. Quality Hosting
Claim Number: FA0311000208584
PARTIES:
The
joint Complainants in this case are Tasty Baking Co., Philadelphia, PA
and Tastykake Investments, Inc., Wilmington, DE (“Complainants”)
represented by John Berryhill of Dann, Dorfman, Herrell and Skillman
P.C., 1601 Market Street, Suite 2400, Philadelphia, PA 19103. The Respondent is Quality Hosting,
Coconut Creek, FL (“Respondent”) represented by David L. Mogel of
Sims, Moss, Kline & Davis, 67 Wall Street, Suite 2211, New York, NY
10005.
REGISTRAR AND DISPUTED
DOMAIN NAME:
The domain name at issue is <tastycake.com>
registered with Bulk Register.com.
PANEL:
On December 10,
2003, pursuant to the Complainants’ request and Respondent’s Agreement to have
the dispute decided by a single member panel, the Forum appointed H. Curtis
Meanor as panelist. 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.
PROCEDURAL HISTORY:
The
commencement date of the proceeding was determined to be November 12, 2003 and
Respondent was directed that its Response must be received by the National
Arbitration Forum (the “Forum”) on or before December 2, 2003. The Response was not received until December
8, 2003. Respondent also submitted an
Additional Submission, which was received December 4, 2003 and was timely. Complainant submitted an Additional
Submission on December 4, 2003.
On
November 5, 2003, BulkRegister.com confirmed by e-mail to the Forum that the
domain name <tastycake.com> is registered with BulkRegister.com
and that the Respondent is the current registrant of the name. BulkRegister.com has verified that
Respondent is bound by the BulkRegister.com 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
November 12, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 2, 2003 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@tastycake.com by e-mail.
PROCEDURAL
ISSUES:
A. Multiple
Complainants
Rule 3 of the UDRP Rules as drafted
appear to permit only a single person or entity to initiate an administrative
proceeding by submitting a complaint in accordance with the UDRP Policy. Here we have multiple Complainants. It is obvious that the Joint Complainants
are related but the exact details of that relationship are not set forth. Whether one is a subsidiary of the other or
both are owned by a holding company is not made clear.
All
that is stated is that Tasty Baking Co. is the operating company while
Tastykake Investments, Inc. is the legal owner of the Complainants’
intellectual property. While normally
only a single entity is recognized as an appropriate Complainant, although it
would have been more appropriate for the exact relationship for the Joint
Complainants to be identified, it seems clear that they are sufficiently
closely related to be treated as a single economic entity for the purpose of
ownership of the Tastykake
mark. There are seven USPTO
registrations with respect to marks containing the word Tastykake for use with
a variety of products. With respect to
five of the marks, Tastykake Investment Company is listed as the last
registered owner and Tasty Baking Co. is listed as the last registered owner
with respect to two of the marks. Since
the parties together own the seven marks with respect to which Respondent’s
domain name is being used in bad faith it is appropriate to treat the two
Complainants as a single entity for purposes of this proceeding.
B. Late
Response
Apparently
an electronic copy of the response was timely received but the hard copy was
not received in a timely fashion as required by UDRP Rules 5 (a) and (b). However, there has been no prejudice because
of this late receipt of the hard copy by only a few days. The Panel has discretion to overlook this
late filing and will do so in the interests of permitting Respondent to be
heard on the merits and to reach those merits with consideration of the
positions of both parties. See
Telstra Corp. v. Chu, D2000 – 0423 (WIPO June 21, 2000). Under this Decision, whether consideration
is to be given to an untimely response is within the discretion of the Panel.
RELIEF SOUGHT:
Complainants
request that the domain name be transferred from Respondent to the
Complainants.
PARTIES’ CONTENTIONS:
A.
Complainants
Tasty
Baking Co. is the operating company of the Joint Complainants while Tastykake
Investments, Inc. is the legal owner of the Complainants’ intellectual
property. It is asserted that Tasty
Baking Co. was founded in 1914 and is one of the country’s leading bakeries of
snack cakes, pies, cookies and donuts.
Tasty Baking Co. offers more than 100 products under the Tastykake brand name. Complaints claim to be the owners of all the
goodwill pertaining to the “TASTYKAKE” family of marks.
Complainants
assert that they have at least seven (7) registered trademarks with the United
States Patent and Trademark Office (“USPTO”) for the Tastykake mark. These
trademark registrations include marks, which have been in continued use since
1959 and therefore are incontestable.
Complainants
assert that since 1998 they have maintained an on-line presence at
<tastykake.com>. The Tastykake
website has been utilized at least since May 2000 and this website will permit
the user to click on a variety of advertisements for the Tastykake products, including
an advertising site directed specifically to children. Complainants assert that Respondent’s domain
name, <tastycake.com>, is confusingly similar in appearance,
spelling and sound to Complainants’ trademark and domain name. It is obvious, as Complainants assert, that
the Complainants’ trademark and Respondent’s domain name are phonetically
identical.
Complainants
also assert that Respondent possesses no legitimate right and interest in the
domain name. Respondent is not commonly
known by the domain name and Respondent does not have any license or
authorization from Complainants to use the Tastykake
name or mark. Respondent also is not
engaged, according to Complainants, in a bona fide offering of goods and
services. Complainant asserts that the
use of the domain name in question resolves to a general search page which
includes links to an “XQ Adult Search” that provides an index of pornographic
materials. Complainants state that the
domain name <tastycake.com> is of obvious appeal to children and
provides no indication that it is going to be used as a gateway to
pornography. It is not used in any
connection whatsoever with Complainants’ products. Complainants assert that its USPTO registrations place Respondent
on notice of its right to the Tastykake
mark and Complainants assert Respondent’s intention is to divert Internet
traffic on the basis of a misleading and confusing domain name.
Complainants
do not take issue with Respondent’s business of trading in adult-oriented
materials. In response to Respondent’s
claim that the domain name of Respondent was selected because of its “somewhat
salacious connotations”, Complainants deny there is anything salacious about
the term “Tastykake” no matter how it is spelled. Complainants assert that the use of the domain name by Respondent
is apt to tarnish the goodwill associated with Complainants’ long-standing use
of its trademark.
B.
Respondent
Respondent
makes no specific reply to Complainants’ assertions that its domain name is
identically or confusingly similar to Complainants’ mark and that Respondent
has no rights or legitimate interest in respect of the domain name at
issue. Respondent states: “While
Respondent does not concede any of Complainants’ assertions, a response to
Complainants’ assertions with respect to the first two elements (confusingly
similar and no legitimate interests) would be academic, since the Complainants
have made no showing with respect to bad faith.”
Respondent
points out that Complainants can cite no instance of consumer confusion between
the two marks and that Respondent made use of the mark for a substantial period
of time before any Complaint by Complainants.
Respondent asserts that the domain name was not registered for the purpose
of selling, renting or otherwise transferring the domain name to Complainants
for consideration in excess of its documented out-of-pocket costs. There is no contention that Respondent
registered the domain name to prevent Complainants from using any mark. It is not alleged that Respondent
registered the domain name for the primary purpose of disrupting the business
of a competitor since there is no competition between Complainants and
Respondent’s engagement in adult-oriented businesses. Respondent also denies that Complainants have shown or can show
that it has intentionally attempted to attract Internet users for commercial
gain to his website by creating a likelihood of confusion with Complainants’
mark as to the source.
Respondent’s
Additional Submission again directs its arguments solely to the issue of bad
faith and asserts that Complainants have offered no proof of any of the
elements of bad faith. Respondent
claims to have used the domain mark at issue since 1999 without any previous complaint
by Complainants. It states that the
domain name was selected for its “somewhat salacious connotations, in keeping
with Respondent’s business.” Respondent points to a multitude of domain names
which deal with adult material or are pointers to adult-oriented or generic
search engines like Respondent’s site which have various formulations of tasty
and/or cake in their names, among which are “slutcakes”, “tastyboobs.com”,
“buttcake.com”, “pussycakes.com”, and “sexcakes.com”.
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.”
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.
In
light of the fact that Respondent makes no argument concerning the existence of
the first two elements set forth above, extended discussion is not
required. However, it is rather obvious
that Respondent’s domain name <tastycake.com> with a “c” is
confusingly similar to Complainants’ mark, Tastykake,
with a “k”. It is also indisputable
that the two names at issue are phonetically identical. A simple change of one letter in the
spelling of the name that is Complainants’ mark without any change in
pronunciation would not render the domain name and Complainants’ mark
sufficiently distinguishable under criterion (1) set forth above. See Toronto-Dominion Bank v. Karpachev,
D2000 – 1571 (WIPO Jan. 15, 2001); see also Hewlett-Packard Co. v. Cupcake
City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000).
Respondent
is not commonly known by the domain name nor does it have a license from
Complainants to use the Tastykake
mark or one confusingly similar with it.
Complainant has established that nothing in Respondent’s WHOIS
information implies in any way that Respondent is commonly known by the
disputed domain name.
Respondent
uses the domain name as a means of resolving to a general search of adult
websites which feature an index of pornographic materials. Clicking on one of the index identifications
will lead to the depiction of explicit pornographic material. Respondent is not
using the domain name in connection with a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i) and is not making a legitimate
non-commercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Sony Kabushiki Kaisha
v. Domain rajadomain@yahoo.com+1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16,
2002) (finding that Respondent’s use of its domain name in order to divert
internet users to a website that offers search engine services and links to
adult-oriented websites was not considered to be a connection with a bona
fide offering of goods and services or legitimate non-commercial or fair
use pursuant to the UDRP Policy); see also Brown & Bigelow Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another’s well-known mark to provide a link to a pornographic site is not a
legitimate or fair use).
UDRP
Policy paragraph 4 sets forth a non-exclusive list of circumstances
constituting evidence of the registration and use of a domain name in bad
faith. Paragraph 4 (b) (iv) states that
the following constitutes evidence of registration and use of a domain name in
bad faith:
“by using the
domain name, you have intentionally
attempted to attract, for commercial gain, Internet users to your website or
other on-line location, by creating a likelihood of confusion with the
complainants’ mark as to the source sponsorship, affiliation or endorsement of
your website or location of a product or service on your website or
location.”
Complainants
hold at least seven (7) incontestable registrations with the USPTO of its mark Tastykake. The mark is incontestable, is famous and is identified by the
public with products manufactured by Complainant, Tasty Baking Co. The USPTO registrations of the mark Tastykake gave Respondent constructive
notice of the existence of that mark long before the registration of its domain
name. Victoria’s Cyber Secret Ltd.
P’ship v. V Secret Catal., 161 F. Supp. 2d 1339, 1349 (S.D. Fl.
2001). Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4 (b)(iv) because Respondent
is causing confusion with Complainants’ mark as to the source and sponsorship
of the website located at the <tastycake.com> domain name. Bad faith exists when Internet users are
directed to a search engine which is totally unrelated to Complainants’ services
and features links to pornographic websites.
See Bank of Am. Corp. v. Oct Island Props., Inc., FA 154531 (Nat.
Arb. Forum June 3, 2003). It was there
stated, “(s)ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, consumers searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website.”
Respondent’s
use of a nearly identical and confusingly similar mark referring users to an
index to adult-oriented materials which will enable access to explicit
pornographic depictions, cannot help but tarnish Complainants’ marks.
DECISION:
The
Panel holds Complainants have proven that the contested domain name, <tastycake.com>
is confusingly similar to its trademark Tastykake,
that Respondent has no rights or legitimate interests in the contested domain
name and that Respondent has registered and used its contested domain name in
bad faith. The Panel therefore orders
that the contested domain name, <tastycake.com>, be transferred to
Complainants jointly.
DATED: December
28, 2003 Honorable H. Curtis Meanor, Arbitrator
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