Del Monte Foods, Inc v. Olaniya Abiodun
Claim Number: FA1812001823103
Complainant is Del Monte Foods, Inc. (“Complainant”), represented by Hara K Jacobs of Ballard Spahr LLP, United States of America. Respondent is Olaniya Abiodun (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegeinn.us>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2018; the Forum received payment on December 28, 2018.
On December 31, 2018, NameCheap, Inc confirmed by e-mail to the Forum that the <collegeinn.us> domain name is registered with NameCheap, Inc and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2019 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@collegeinn.us. Also on January 2, 2019, 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 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, Del Monte Foods, Inc., uses the COLLEGE INN trademark in connection with the production, distribution, marketing, and sale of premium quality canned and packaged food products. Complainant has rights in the COLLEGE INN mark based upon its various registrations of the mark with the United States Patent and Trademark Office (“USPTO”), the oldest of which dates back to 1952 although actual use of the mark in commerce began in 1922. The Complainant’s legitimate website for its COLLEGE INN products is <www.collegeinn.com>. Respondent’s <collegeinn.us> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the COLLEGE INN mark in its entirety in the domain name and adds the country code top-level domain (“ccTLD”) “.us.”
Respondent lacks rights and legitimate interests in the <collegeinn.us> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a website that is a replica of Complainant’s genuine website.
Respondent registered and uses the <collegeinn.us> domain name in bad faith. Respondent failed to respond to Complainant’s cease and desist letter. Further, Respondent had actual knowledge of Complainant’s rights in the COLLEGE INN mark prior to registering the disputed domain name and uses it to resolve to a website that is an identical copy of Complainant’s legitimate <www.collegeinn.com> website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision
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.”)
Preliminary Issue – Identification of Proper Complainant
It is a foundational requirement of Policy ¶ 4(a)(i) for the Complainant to demonstrate its ownership of rights in a trademark to which it claims that a disputed domain is confusingly similar. Therefor, the evidence of record must support such claim of trademark rights in the named Complainant. In the present case, Complainant is named as “Del Monte Foods, Inc” and a number of trademark registration certificates are submitted into evidence relating to the claimed COLLEGE INN mark. However, perhaps due to the age of these registrations, the submitted certificates do not reflect the owner as Del Monte Foods, Inc. Some mention “Nabisco, Inc.” and others show “Del Monte Corporation” but there is no submission of documents showing the assignment of these registrations to the named Complainant. The only submission that mentions Del Monte Foods, Inc is a pending intent-to-use trademark application for the mark COLLEGE INN PASTA INFUSIONS[i]. Although the Policy does not have as strict evidentiary requirements as courtroom litigation, it is incumbent upon a complainant, and its representative, to adequately support such a critical element of proof as the owner of asserted trademark rights.
Nevertheless, exercising its own discretion to conduct the independent investigation of publicly available information, this Panel has reviewed the assignment records of the asserted trademark registrations at the USPTO website and found that they are, in fact, currently owned by the named Complainant Del Monte Foods, Inc resulting from a February 18, 2014 assignment to that entity. In light of this information, the case may now proceed with Del Monte Foods, Inc as the named Complainant.
Complainant has rights in the COLLEGE INN trademark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides copies of its registrations with the USPTO. Therefore, the Panel concludes that Complainant has rights in the COLLEGE INN mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <collegeinn.us> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the COLLEGE INN mark in its entirety in the domain name and adds a ccTLD. The addition of a ccTLD is generally insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Here, Respondent wholly incorporates the COLLEGE INN mark in the domain name and adds the “.us” ccTLD. Therefore, the Panel concludes that Respondent’s <collegeinn.us> domain name is confusingly similar to Complainant’s COLLEGE INN mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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 evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <collegeinn.us> domain name because Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use its COLLEGE INN mark. Where a response is lacking, relevant WHOIS information may be used to identify the respondent under Policy ¶ 4(c)(iii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”). The Panel notes that the WHOIS record for the <collegeinn.us> domain name identifies Respondent as “Olaniya Abiodun,” and no information in the record of this case shows that Respondent is known otherwise or that it is authorized to use Complainant’s mark or is commonly known by the disputed domain. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <collegeinn.us> domain name under Policy ¶ 4(c)(iii).
Further, the Panel agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark that is related to the disputed domain name, in any manner that would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Next, Complainant argues that that Respondent fails to use the <collegeinn.us> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to divert users to a website that mimics Complainant’s website. Use of a disputed domain name to divert internet users may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(ii) or (iv). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). Here, Complainant provides printouts from the disputed domain name’s resolving webpage and it is immediately apparent that this page is identical to Complainant’s own legitimate website. It is not immediately apparent what the Respondent’s purpose is in creating this website but, in the absence of a Response or any other submission by the Respondent, this Panel is prepared to accept the general assertion of harm stated by Complainant. See Digg Inc. v. Digg, Inc., FA0808001220833 (Forum Oct. 9, 2008) (concluding, where the disputed domain name was used to display a mirror image of the complainant’s website, that “Respondent is attempting to pass itself off as Complainant, so that Respondent’s actions do not constitute 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)”); Cetera Financial Holdings, Inc. v. Whois Privacy Protection Service, D2013-1831 (WIPO January 10, 2014) (“The Complainant’s evidence shows that the Respondent has in fact created a mirror image of its operating website, down to the smallest detail including the copyright and legal notices on individual pages. *** As a result, the Respondent’s use of the disputed domain name will lead Internet users into a phishing scheme…”) Therefore, the Panel here concludes that Respondent fails to use the <collegeinn.us> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the COLLEGE INN mark prior to registering the <collegeinn.us> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through a respondent’s use of the mark. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Complainant provides screenshots of Respondent’s website, which features identical content to Complainant’s website. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the COLLEGE INN mark, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Next, the Complainant asserts that the disputed domain name was registered and used in bad faith because it resolves to a replica website. Use of a domain name to copy the legitimate website of a complainant has been held to support a finding of bad faith. Go Sport v. Clara Toussaint, (WIPO Apr. 16, 2015) (“the disputed domain name is used to direct Internet users to the Respondent's website, which is a slavish copy of the Complainant's website, in order to promote and sell allegedly counterfeit products and possibly phish personal data and financial information. The Panel contends that the Complainant evidenced that the disputed domain name was thus being used in bad faith.”); Crosspoint Solutions, LLC v. Igor Chernavin, FA1206001450358 (Forum Aug. 2, 2012) (where Respondent’s website is a mirror image of Complainant’s own website, the “Panel … finds that such passing off and phishing is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).”) Here, Complainant submits into evidence screen shots of its own <www.collegeinn.com> website as well as those showing the site of the <collegeinn.us> domain name and the Respondent’s website is, in fact, identical. While the Complainant does not specify the harm that is caused by Respondent’s website, in the absence of any Response or other submission by the Respondent, this Panel finds it reasonable to conclude that the website is intended for some nefarious purpose. As such, it is seeking to pass itself off as the legitimate site of Complainant in violation of Policy ¶4(b)(iv) and, thus, Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s bad faith was further demonstrated by Respondent’s failure to provide any response to Complainant’s letters. Failure to answer numerous cease-and-desist letters is evidence of bad faith. See Seiko Epson Corp. et al. v. JIT Consulting, FA 8000095476 (Forum Oct. 20, 2000) (“Epson also argues that Respondents provision of inaccurate contact information and his failure to answer numerous cease-and-desist letters as well as to respond to this complaint is evidence of bad faith. This panel agrees.”) The Panel finds that, under the circumstances of this case, Respondent’s failure to respond to Complainants letters further supports a finding of bad faith under Policy ¶4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <collegeinn.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 25, 2019
[i] Pending intent-to-use trademark applications have been held not to be adequate as evidence of trademark rights under the Policy. See WIPO Overview 3.0, par. 1.1.4; Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Lt, FA1804001784458 (Forum June 15, 2018) (“The Panel finds Complainant cannot establish rights in the MANOR PARK mark through its intent-to-use USPTO application per Policy ¶ 4(a)(i)”)
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