Kellogg North America Company v. Frank UNGER
Claim Number: FA1504001613262
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Frank UNGER (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kelloggs.club> and <pringles.club>, registered with GoDaddy.com, Inc.
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 Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2015; the Forum received payment on April 20, 2015.
On April 8, 2015, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <kelloggs.club> and <pringles.club> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kelloggs.club and postmaster@pringles.club. Also on April 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
1. The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i)).
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii)).
3. The domain names were registered and are presently being used in bad faith (UDRP Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii)).
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <kelloggs.club> and <pringles.club> domain names are confusingly similar to Complainant’s KELLOGG and PRINGLES marks.
2. Respondent does not have any rights or legitimate interests in the <kelloggs.club> and <pringles.club> domain names.
3. Respondent registered or used the <kelloggs.club> and <pringles.club> domain names in bad faith.
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."
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.
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 to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly 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.”).
The Kellogg Company (informally, “Kellogg's” or “Kellogg”) is a multinational food manufacturing company founded in 1906 and with current annual sales in excess of $13 billion. Kellogg sells breakfast foods, snacks, frozen foods and beverages in more than 180 countries. Kellogg operates numerous websites, chief among them http://www.kelloggs.com and http://www.kelloggcompany.com/. According to Compete.com, <kelloggs.com> attracts over 850,000 unique visitors per month. Alexa.com ranks <kelloggs.com> as the 5,612th most popular website in the United States.
Kellogg owns multiple world-famous brands, including All-Bran, Froot Loops, Kellogg’s Corn Flakes, Kellogg’s Frosted Flakes, Rice Krispies, Special K, Cocoa Krispies, Apple Jacks, Keebler, Pringles, Pop-Tarts, Kashi, Cheez-It, Eggo, Nutri-Grain, Morningstar Farms and many more.
Kellogg's largest factory is at Trafford Park in Manchester, United Kingdom, which is also the location of its European headquarters. Kellogg's holds a Royal Warrant from Queen Elizabeth II and the Prince of Wales.
Kellogg is publically traded on the New York Stock Exchange (NYSE) under the symbol “K.”
For purposes of allowing its customers and consumers to research and leave feedback regarding Complainant‟s various products, Complainant maintains a legitimate website at the domain name <kelloggs.com>.
By virtue of its federal trademark and service mark registrations, Complainant is the owner of the KELLOGG’S Marks. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (“Panels have long recognized Complainant‟s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (NAF April 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (NAF Apr. 14, 2006) (finding that the complainant‟s registration of the ENTERPRISE, ENTERPRISE RENT-A CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfies the requirement of demonstrating rights in the mark under consideration under Policy ¶ 4(a)(i)).
When comparing the Disputed Domain Names to KELLOGG’S Marks, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Names and the Complainant‟s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (NAF May 27, 2003) (“[t]he addition of a top- level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
The Disputed Domain Names contain the KELLOGG’S Marks in their entirety, thus resulting in domain names that are identical, and confusingly similar, in sight, sound, and meaning to the Complainant‟s KELLOGG’S and PRINGLES Marks. Where, as here, a disputed domain name encompasses and captures a complainant‟s trademark in its entirety, past Panels have established that the disputed domain name should be found confusingly similar to that trademark. See Am.Red Cross v. Leonard Habersham, FA 103926 (NAF Mar. 6, 2002) (holding respondent's website <americanredcross.info> is confusingly similar to complainant‟s mark AMERICAN RED CROSS because the domain name encompasses the trademark in its entirety). Thus, the Disputed Domain Name is considered to be identical and confusingly similar to the KELLOGG’S Marks.
Respondent's removal of the apostrophe does nothing to distinguish the Disputed Domain Name from KELLOGG’S trademarks. In other words, the omission of the apostrophe does not diminish the confusing similarity between the Disputed Domain Name and KELLOGG’S trademarks and should be disregarded for purposes of making this determination. See Mrs. World Pageants, Inc. Crown Promotions, FA 0094321 (NAF Apr. 24, 2000) (Finding that punctuation is not significant in determining the similarity of a domain name and mark). See also Cher now Comic’s, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (Holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
For the above stated reasons, and because Complainant owns long-standing and valuable rights that are infringed by Respondent's identical (and/or confusingly similar) domain name, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Ent’s Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerber, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not been commonly known by the Disputed Domain Names. See Policy, ¶ 4(c)(ii); WHOIS data for the Disputed Domain Names. Where “the WHOIS information suggests a Respondent is known as an entity other than the trademark associated with the Complainant, and the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant‟s…mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Names. See United Way of America v. Alex Zingaus, FA 1036202 (NAF Aug. 30, 2007) (finding no rights or legitimate interests for respondent because respondent’s WHOIS information suggests respondent is known by a different name than the domain name). In the instant case, the pertinent WHOIS information identifies the Registrant as “Frank Unger,” which does not resemble the Disputed Domain Names in any manner – thus, the Respondent cannot be regarded as having been commonly known by the Disputed Domain Names so as to have acquired rights to or legitimate interests in the domain name within the meaning of ¶ 4(c)(ii). See Intron Corp. v. Kane, FA 0768859 (NAF Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kane c/o Electrometric a/k/a Electrometric Equip ‘t” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, a respondent is not commonly known by a disputed domain name where there is no evidence on the record, including the WHOIS information, suggesting that respondent is commonly known by the disputed domain name. See Copper town Drive-Thru Sys., LLC v. Snowden, FA 715089 (NAF July 17, 2006) (respondent was not commonly known by the
<coppertown.com> domain name and presented no evidence suggesting otherwise, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)). Accordingly, Respondent has no rights or legitimate interest in the Disputed Domain Names.
Respondent is using the Disputed Domain Name <kelloggs.club> to redirect Internet users to a website that resolves to a generic holding page that reads, in part, “Website Coming Soon.” Respondent has failed to make use of this Disputed Domain Name‟s website and has not demonstrated any attempt to make legitimate use of the domain name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA 0924563 (NAF Apr. 10, 2007) (Holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name); Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 0296583 (NAF Sept. 2, 2004) (Respondent is using the Disputed Domain Name to resolve to an empty page featuring no substantive content or links is further evidence that Respondent's failure to actively use the Disputed Domain Name(s) suggests a lack of rights and legitimate interests in the Disputed Domain Name(s) as blank pages are neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
Prior to resolving to a generic holding page, Respondent had been using the Disputed Domain Name <kelloggs.club> to direct internet users to websites featuring generic links to third-party websites. The website previously found at the Disputed Domain Name <kelloggs.club> featured links that directly referenced Complainant‟s KELLOGG’S trademark. Additionally, Respondent is currently using the Disputed Domain Name <pringles.club> for the same purpose of directing internet users to a website featuring generic links to third-party websites. Prior UDRP decisions have consistently held that registrants that monetize domain names using redirecting services and pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. See eg, Vance Int’l, Inc. v. Abend, FA 0970871 (NAF June 8, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites); Am. Century Proprietary Holdings, Inc. v. Travis Martin, FA 1262486 (NAF Jun. 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and respondent presumably generates click-through fees from such use); Genzyme Corp. v. Keyword Mktg., Inc., FA 1007979 (NAF Jul. 17, 2007) (holding that respondent has no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites). As such, the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
By registering domain names comprising the KELLOGG’S Marks, the Respondent is trying to deprive the Complainant of the ability to use and register its own mark in domain names. Thus, Respondent registered and is using the domain name only to trade on the goodwill and reputation associated with the KELLOGG’S Marks and not in connection with any bona fide offering of goods or services. See Comerica Inc. v. Horoshiy, Inc., D2004-0615 (WIPO Oct. 18, 2004) (“The very act of having acquired the domain name incorporating the complainant‟s mark raises the probability of respondent using it in a manner that is contrary to complainant‟s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such a disputed name can be put that would not violate complainant‟s rights.”); Telstra Corp. Ltd. v. Nuclear Marshmellows, D2000-0003 (WIPO Feb. 19, 2000) ("Any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off breaches of Australian consumer protection legislation, and trademark infringements").
The respondent registered the Disputed Domain Names on or about May 11, 2014, which is after Complainant‟s registration of its <kelloggs.com> and <pringles.com> in August 1995, registration of its relevant trademarks with the USPTO, and significantly after the Complainant’s first use in commerce of the KELLOGG‟S trademark in 1907 and the PRINGLES trademark in 1968.
The granting of registrations by the USPTO to the Complainant for the KELLOGG’S Marks is prima facie evidence of the validity of the terms KELLOGG’S and PRINGLES as a trademarks, of Complainants‟ ownership of the KELLOGG’S Marks, and of Complainants‟ exclusive right to use the KELLOGG’S Marks in commerce on or in connection with the goods and/or services specified in the registration certificates. Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not granted Respondent permission or authorization to use the KELLOGG’S Marks in any manner, including in domain names.
The Panel finds Respondent has no rights or legitimate interests in <KELLOGGS.CLUB> or <PRINGLES.CLUB>. Accordingly, Policy ¶ 4(a)(ii) has been satisfied.
Complainant and both the KELLOGG’S and PRINGLES brands are known internationally. Complainant has marketed and sold goods using the KELLOGG’S Marks since the early 1900s and has owned the <kelloggs.com> and <pringles.com> domain names since August 1995. Indeed, by registering domain names that use the Complainant‟s exact famous KELLOGG’S and PRINGLES trademarks, the Respondent has demonstrated a thorough knowledge of the Complainant‟s brands and business. Further, the website previously found at the Disputed Domain Name <kelloggs.club> featured links that directly referenced Complainant and their business. See Exhibit C for screenshots of websites available at Respondent's domain names, including historical screenshots of the website found at the Disputed Domain Name <kelloggs.club>. Thus, the totality of the circumstances strongly suggest that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant‟s brands at the time the Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Perfumes Christian Dior v. Javier Garcia Quintals, D2000-0226 (WIPO May 17, 2000).
Prior to resolving to a generic parked page, Respondent had been using the Disputed Domain Name <kelloggs.club>, and is currently using the Disputed Domain Name <pringles.club> , to redirect unsuspecting Internet users to websites featuring advertising links to third-party websites, and presumably receiving pay-per-click fees in the process. The Respondent was, and is, using the fame of the KELLOGG’S Marks improperly to increase traffic to the web sites listed at the Disputed Domain Names for commercial gain. It is well established that such conduct constitutes bad faith. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 30, 2006) (“Respondent's use of the Domain Name to earn referral fees by linking to other web sites attracts Internet users to Respondent's site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith.”).
At the time of the Disputed Domain Names‟ registration, the Respondent knew, or at least should have known, of the existence of the KELLOGG’S Marks, and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to Complainant‟s international presence and reputation, performing a simple search across any of a number of internet search engines for the terms “KELLOGGS” and “PRINGLES” retrieves numerous links to Complainant‟s websites, chief among them the <kelloggs.com> and <pringles.com> domain names that Complainant uses to support its KELLOGG’S Marks and business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“Given the Complainant‟s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”); GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that Respondent knew of, and targeted, Complainant’s trade mark”).
The Respondent has ignored Complainant‟s attempts to resolve the dispute outside of this administrative proceeding. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding failure to positively respond to complainant‟s efforts to make contact “provides strong support for a determination of „bad faith‟ registration and use.”); RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “[t]he Complainant alleges that it sent numerous cease and desist letters to Respondent without receiving a response”).
The Respondent is a serial cybersquatter and has repeatedly registered domain names containing trademarks of other entities in order to capitalize on the goodwill developed by others – in fact, Respondent has previously engaged in the practice of registering domain names containing famous trademarks in the .club top level domain (TLD), as in the instant case, and this behavior has led to multiple UDRP/URS proceedings and the transfer or suspension of Respondent's domain names under those proceedings. These cases thereby provide evidence that Respondent has engaged in a continuing pattern of bad faith registrations and use. See Virgin Enterprises Limited v Frank UNGER, FA 1585810 (NAF Nov. 5, 2014); Allgemeiner Deutscher Automobil-Club e.V. (ADAC). v Frank Unger, D2014-1347 (WIPO Oct. 6, 2014); Cash Converters Pty Ltd v Frank Unger, D2014-0891 (WIPO July 22, 2014).
Finally, on balance of the facts set forth above, it is more likely than not that the Respondent knew of and targeted KELLOGG’S Marks, and Respondent is found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
The Panel finds, due to the fame of Complainant’s mark, that Respondent had actual knowledge thereof when he wrongfully registered the subject domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kelloggs.club> and <pringles.club> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 1, 2015
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