Kellogg North America Company v. Mark Palmer / Magicmojo
Claim Number: FA1612001705826
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Mark Palmer / Magicmojo (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <kelloggs.press>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2016; the Forum received payment on December 5, 2016.
On December 6, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <kelloggs.press> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2016 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.press. Also on December 7, 2016, 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 January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Kellogg North America Company, is a multinational food manufacturing company which sells breakfast foods, snacks, frozen foods and beverages in more than 180 countries.
Complainant has rights in the KELLOGG’S mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies throughout the world (e.g., Reg. No. 115,348, registered Feb. 6, 1917).
Respondent’s <kelloggs.press> is identical or confusingly similar to Complainant’s KELLOGG’S mark, as it contains the mark in its entirety, merely omitting the apostrophe and appending the generic top-level domain (“gTLD”) “.press.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the KELLOGG’S marks in any manner. Respondent’s <kelloggs.press> redirects Internet users to a parked page featuring third-party links, some of which directly compete with Complainant’s business. Presumably, Respondent receives pay-per-click fees from the linked websites. This behavior amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent has prior adverse UDRP rulings for bad faith, evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Additionally, Respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users for commercial gain. Further, due to the fame and notoriety of Complainant’s KELLOGG’S mark, Respondent must have had actual or constructive knowledge of Complainant’s rights in the mark at the time it registered the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registration with the USPTO for its KELLOGG’S mark.
Respondent is not authorized to use the KELLOGG’S mark.
Respondent registered the at-issue domain name subsequent to when Complainant acquired rights in the KELLOGG’S mark.
Respondent uses the domain name to address a website featuring advertising links to third-party websites, some competing with Complainant. Respondent is presumably receiving pay-per-click fees in the process.
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(f), 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 (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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the KELLOGG’S mark pursuant to Policy ¶ 4(a)(i) by virtue of its owning a relevant trademark registration with the USPTO and otherwise. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue domain name contains Complainant’s entire KELLOGG’S trademark, merely omitting the apostrophe and appending the generic top-level domain (“gTLD”) “.press.” The omission of an apostrophe and addition of a necessary top-level domain name to Complainant’s trademark are irrelevant in Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s <kelloggs.press> domain name is confusingly similar or identical to Complainant’s KELLOGG’S mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Morgan Stanley v. Mark Palmer / Magicmojo, FA 1679014 (Forum July 12, 2016) (finding the <morganstanley.press> domain to be identical to the complainant’s MORGAN STANLEY mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Mark Palmer” with “Magicmojo.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <kelloggs.press> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Respondent uses the <kelloggs.press> domain name to direct Internet users to a website featuring links to third-party websites including links to Complainant’s competition. Respondent’s use of the domain name in this manner 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). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent has been a party to multiple adverse UDRP decision such as Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Mark Palmer, Magicmojo, D2016-1826 (WIPO Nov. 3, 2016) and Morgan Stanley v. Mark Palmer / Magicmojo, FA 1679014 (Forum July 12, 2016)). Respondent’s history of cybersquatting shows a pattern and thereby suggests Respondent’s bad faith in the instant proceedings regarding the <kelloggs.press> domain name pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Furthermore and as mentioned above, Respondent is using the <kelloggs.press> domain name to direct internet users to a website featuring links to third-party websites, some featuring goods or services that compete with those of Complainant. Respondent is likely receiving pay-per-click fees in the process. Such use of the confusingly similar domain name misleads and diverts consumers from Complainant’s website and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”);see also, Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> 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.’”).
Finally, Respondent had knowledge of Complainant’s rights in the KELLOGG’S mark when it registered the <kelloggs.press> domain name. Complainant’s mark is very well known, well promoted and has been for many years. It is inconceivable that Respondent could have created the domain name without first having knowledge of Complainant and its trademark. .Therefore, Respondent’s prior knowledge of Complainant's trademark additionally shows that Respondent registered the at-domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed 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.press> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 10, 2017
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