Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting
Claim Number: FA0311000208584
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.
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.
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 firstname.lastname@example.org by e-mail.
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.
Complainants request that the domain name be transferred from Respondent to the 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.
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”.
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 email@example.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.
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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