Kellogg North America Company v. Hulmiho Ukolen / Poste restante
Claim Number: FA1511001649542
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kashicereal.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 23, 2015.
On November 24, 2015, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <kashicereal.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 November 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@kashicereal.com. Also on November 30, 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 December 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a multinational food manufacturing company which sells
breakfast foods, snacks, frozen foods and beverages in more than 180 countries.
Kashi Company, a wholly owned subsidiary of Complainant, specializes in the manufacture and marketing of breakfast cereals, energy bars, crackers and snack foods.
Complainant has rights in the KASHI trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,366,934, registered on October 22, 1985).
Respondent registered the <kashicereal.com> domain name on May 4, 2015.
The domain name is confusingly similar to Complainant’s KASHI mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use its KASHI mark.
Respondent fails to provide a bona fide offering of goods or services by means of the domain name, or a legitimate noncommercial or fair use of it, in that the website resolving from the domain name displays pay-per-click links to websites related to the business of Complainant, from the operation of which links Respondent seeks to profit.
Respondent has offered the domain for sale at a price in excess of its out-of-pocket costs.
Respondent has demonstrated a pattern of bad faith use and registration of domain names in prior UDRP decisions decided against it.
Respondent registered the domain name while knowing of Complainant and its rights in the KASHI mark.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language of the Proceeding
Complainant requests that this proceeding be conducted in the English language. UDRP Rule 11(a) provides that, in ordinary circumstances, the language of the proceeding will be that of the applicable Registration Agreement. In this case, that language is Finnish. However, the same Rule grants to a panel discretion, in appropriate circumstances, to employ a language other than that of the pertinent Registration Agreement. See Immobiličre Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun, D2011-2106 (WIPO February 21, 2012). See also Dama S.p.A. v. Duan Zuochun, D2012-1015 (WIPO July 5, 2012).
In support of its request for use of the English language, Complainant offers, among others, the following reasons:
a. Respondent has been involved in 17 separate UDRP proceedings dating from June 2013, and administered by either the FORUM or the World Intellectual Property Organization, all of which proceedings were conducted in English.
b. Complainant is unable to communicate in Finnish.
c. Translation of the Complaint and its supporting documents into Finnish would unfairly disadvantage and burden Complainant and delay the completion of this proceeding.
d. The disputed domain name incorporates the English word “cereal,” which has no meaning in Finnish.
e. The website to which the domain name resolves is only available in
English, and it features pay-per-click links which are also available only in English.
In light of the reasons advanced by Complainant in support of its request, and in view of Respondent’s failure to oppose the request, the Panel finds it appropriate in all the circumstances that this proceeding be conducted in English. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (the panel there exercising discretion in deciding that the language of the proceedings advance in English, rather than that of the Registration Agreement). To the same effect, see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006). Accordingly, we so determine.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the KASHI trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), finding that:
Complainant’s timely registration with the USPTO and subsequent use of the … mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Finland). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding, under Policy ¶ 4(a)(i), that it does not matter whether a UDRP complainant has registered its mark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <kashicereal.com> domain name is confusingly similar to Complainant’s KASHI trademark. The domain name contains the entire mark, adding only the generic term “cereal,” which relates to Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (finding that the addition of both the generic word “advisors” and the gTLD “.com” to the mark of another in creating a domain name did not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <kashicereal.com> domain name, and that Complainant has not authorized Respondent to use its KASHI trademark. Moreover, the pertinent WHOIS information identifies the registrant only as “Hulmiho Ukolen / Poste restante,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <kashicereal.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails either to use the <kashicereal.com> domain name to provide a bona fide offering of goods or services, or otherwise to make a legitimate noncommercial or fair use of it, in that the website resolving from the domain name features pay-per-click links to websites related to the business of Complainant, from the operation of which links Respondent seeks to profit. This employment of the domain name is 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) so as to confirm in Respondent rights to or legitimate interests in the domain name recognizable under those provisions of the Policy. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (finding that the operation of a pay-per-click website resolving from a domain name that is confusingly similar to the mark of a UDRP complainant was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has been a respondent in a lengthy series of UDRP decisions in which panels have found that it registered and used domain names in bad faith. See: Baylor University v. Hulmiho Ukolen / Poste restante, FA 1640945 (FORUM Nov. 18, 2015); Accenture Global Svces. Limited v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, D2015-1519 (WIPO Nov. 2, 2015); Edelman Shoe, Inc. v. Hulmiho Ukolen / Poste restante, FA 1630741 (FORUM August 27, 2015); Life Extension Foundation, Inc. v. Hulmiho Ukolen / Poste restante, FA 1628843 (FORUM August 21, 2015); and Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Hulmiho Ukolen /Domain Admin, Whois protection, D2015-0974 (WIPO August 4, 2015). Under Policy ¶ 4(b)(ii), this constitutes a pattern of abusive registrations and uses which stands as proof of Respondent’s bad faith in the registration and use of the <kashicereal.com> domain name. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009):
These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).
We are also convinced by the evidence that Respondent has both registered and uses the <kashicereal.com> domain name, which is confusingly similar to Complainant’s KASHI trademark, to attempt to profit from the operation of the website resolving from the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
To the same effect, see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (finding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to the business of a UDRP complainant in order to generate click-through revenue showed bad faith registration and use under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the KASHI trademark when it registered the <kashicereal.com> domain name. This is further proof of Respondent’s bad faith in registering the domain name. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith registration where the evidence of record demonstrated that a respondent was well aware that the domain names there in issue incorporated marks in which a UDRP complainant had rights).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kashicereal.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 4, 2016
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