Hormel Foods Corporation, Hormel Foods Sales,
LLC and Hormel Foods LLC v. The Wizard of Austin
Claim Number: FA0511000602996
PARTIES
Complainant is Hormel Foods
Corporation, Hormel Foods Sales, LLC and Hormel Foods LLC (collectively,
“Complainant”), represented by William
Schultz, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth
Street, Minneapolis, MN 55402-2215.
Respondent is The Wizard of
Austin (“Respondent”), 1717 Norris Drive, Austin, TX 78704.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spamarama.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 28, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 29, 2005.
On November 30, 2005, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <spamarama.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 December 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 21, 2005 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 postmaster@spamarama.com by e-mail.
A timely Response was received and determined to be complete on December 20, 2005. Mr. John Booher, the administrative contact given for the disputed domain name, provided a Response to the allegations of Complainant, without clarifying whether the Response is issued for Wizard of Austin Inc, the Registrant of <spamarama.com>, or not. Due to the fact that the contentions in the Response refers to the right to use the disputed domain name, the Panel considers that John Booher, while issuing the Response, acted in the name and on behalf of the Registrant – The Wizard of Austin, Inc – the Respondent in this case.
An Additional Submission from Complainant was received on December 23,
2005.
On December 29, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Hormel Foods Corporation is a multinational manufacturer and marketer of meat and food products, including SPAM brand canned meat. Collectively, Hormel Foods Corporation, Hormel Foods, LLC, and Hormel Foods Sales, LLC (collectively referred to as "Complainant") produce, market and promote products under the SPAM mark.
These companies own United States trademark
registrations in different classes for a whole range of marks, such as:
SPAM®, SPAMARAMA®, SPAMBURGER®,
SPAMTASTIC®, and SPAMJAM®.
Complainant contends
that it owns the registered trademark SPAMARAMA, which has been used in
connection with "entertainment services in the nature of an annual festival
featuring a variety of activities, namely, exhibitions, cooking and other
contests, and music" since as early as April 1978. The festivals, which
are sponsored in part by Disability Assistance of Central Texas, Inc.,
celebrate Hormel's SPAM canned meat product.
Complainant contends
that:
·
In 1994, it entered into a license agreement with David and Sharon
Arnsberger to use the SPAMARAMA mark in connection with an annual SPAMARAMA
festival held in Austin, Texas. The
license provides that Hormel Foods had the right to terminate the agreement
upon material breach;
·
In the spring of 2004, it learned that John Booher, who is also known as
"The Wizard of Austin," Respondent in this case, worked with
the Disability Assistance of Central Texas and assumed the responsibilities
from the Arnsbergers related to the SPAMARAMA festival;
·
it was not previously notified of the transaction
between the Arnsbergers and Respondent;
·
nevertheless, it contacted Mr. Booher informing him of
the license agreement and stated that he was not in compliance with the terms
of the agreement;
·
on July 18, 2005, it notified Mr. Booher of his
material breach of the licensee agreement and requested cure within ten days,
cure which, in the opinion of Complainant, did not occur, despite the
assurances given by Mr. Booher;
·
on July 29, 2005, Complainant informed Mr. Booher that
the 1994 license agreement was terminated based on his material breach and
Respondent was
required to immediately cease use of all SPAM marks, including the SPAMARAMA
mark;
·
Respondent failed to cease use of the SPAMARAMA mark in connection
with the <spamarama.com> domain
name and the website located at that domain name;
·
Respondent had no prior rights in the SPAMARAMA
trademark and any rights he may have acquired through the Arnsberger's license
agreement have been terminated;
·
Respondent has no legitimate interest in the <spamarama.com> domain name and its
continued trafficking of that domain name, after the license agreement was
terminated and without the permission of Complainant, represents bad faith.
.
B. Respondent
As indicated in the procedural history, Mr. Booher provided a Response to the allegations of Complainant.
In this Response, Mr. Booher contends that:
· he registered the disputed domain name on March 24, 1997 and has maintained, hosted and cared for this website continuously ever since;
· Complainant has known about the site since its conception and therefore has approved its existence for almost eight years;
· at the specific request of the legal department of the Complainant in 1997, he has since displayed continuously the following legal disclaimer on the site: “SPAM® is a registered trademark of the Hormel Foods Corp. for luncheon meat. SPAMARAMA™ is a trademark of the Hormel Foods Corp. for an annual festival in Austin, TX. Also, Hormel Foods Corp. has no financial or legal association with this Website.”;
· there is nothing in any document offered by Complainant, and there is no written agreement about the legal ownership of <spamarama.com>;
· the ownership of SPAMARAMA the festival, is an ongoing, totally separate, legal action and doesn’t have anything to do with the <spamarama.com> domain name.
· Respondent is the co-author of SPAMARAMA: the Cookbook ISBN: 0966207300. (Originally published in 1997), written with the prior knowledge and approval of Complainant so the disputed domain is still the major source of sales of this cookbook and other SPAMARAMA merchandise;
· the existence of <spamarama.com> predates the UDRP and is therefore outside the legal arena of the Policy. Furthermore, <spamarama.com> is a parody site and should enjoy free speech rights given to satire.
· The term “spam” has entered the public domain via common English usage, like “aspirin,” and the usage in this case neither disparages nor diminishes the value of any alleged trademark rights Complainant may claim.
C. Additional Submissions
Complainant submitted timely additional contentions, in which it
asserts that:
·
Respondent
admitted that the SPAMARAMA mark belongs to Complainant;
·
the other
co-author of the SPAMARAMA cookbook is David Arnsberger, the licensee of
SPAMARAMA mark and that the sale of the book is covered by the licensee.
·
at the
termination of the license, all alleged rights to use the SPAMARAMA mark
ceased,
·
the
registration of the domain name in 1997 does not preclude jurisdiction under
the Policy.
·
Respondent’s
defenses of parody and fair use have no merit.
FINDINGS
The Panel considers that the assertions of
the parties raise several preliminary issues which need to be addressed.
Competence of the Panel to decide this case
Respondent has contested the competence of the Panel to decide this Complaint under the UDRP in view of the fact that the domain name was registered before the UDRP came into force.
The disputed domain name is registered with
the Registrar, Network Solutions. The service agreement (Schedule A to Network Solutions
Service Agreement, Additional Terms applicable to Registrants of Domain Names, section 6)
currently provided
by said Registrar on its website requires the domain name registrants both to
be bound by the current domain name Dispute Policy (UDRP as approved by ICANN
on 24th October 1999) and to accept that Network Solutions, in its
own discretion, is free to amend its Policy on thirty days notice. It further
provides that the registrant agrees that, by
maintaining the reservation or registration of the domain name after modifications
to the dispute policy become effective, the Registrant has agreed to these
modifications. The service agreement also provides (General Provisions -
section 19) that all the rules
and policies incorporated by reference in its content (including, without
limitation, the dispute policy and the privacy statement) supersede all prior
agreements and understandings, whether written or oral, or whether established
by custom, practice, policy or precedent, with respect to the subject matter of
the agreement.
Having considered the said
provisions of the service agreement existing between the Registrant and the
Registrar, the Panel concludes that it has competence to decide this Complaint under the UDRP, despite the fact
that the disputed domain name was registered before the UDRP was established.
Submission of the Complaint by multiple
Complainants
The Complaint is submitted by multiple
complainants, members of the Hormel Group, but still different legal persons.
This has significant relevance as to the rights of each Hormel company in
connection to the object of the dispute. For example, according to the evidence
provided by Complainant, the owner of the SPAMARAMA trademark is Hormel Foods
Corporation (Delaware), while the license agreement is offered by Hormel Foods
Corporation and the letters addressed to John Booher are signed on behalf of
Hormel Foods LLC. This last company is, according to the Complaint, a different
one from the Hormel Foods Corporation and it is registered in Minnesota. While
this Panel will not depart from the practice of different prior UDRP panels
which took in consideration complaints issued by multiple complainants as
companies in the same group, it shall rule the decision in this case by
pondering the rights of the different companies collectively referred to in the
Complaint as Complainant.
The source of the dispute
The contentions of
Complainant rely explicitly and solely on the termination of the 1994 license
agreement concluded with David and Sharon Arnsberger by Hormel Foods
Corporation and the subsequent termination of any right, if any acquired under
the license agreement, by Respondent to use the SPAMARAMA trademark in connection with the annual festival held in Austin.
Although the Response
does not raise any defenses in connection with the said agreement, from the
assertions of Mr. Booher, it results with clarity that the “ownership of the
festival,” based on the license agreement is “an ongoing legal action.”
The Panel does not
agree with Mr. Booher’s statement that the ownership of the disputed domain
name is a separate issue from the use of the SPAMARAMA mark in connection to
the festival.
Therefore the Panel
finds that the source of this dispute is the termination of Respondent’s rights
under the 1994 license agreement assigned to it by David and Sharon
Arnsberger.
DISCUSSION
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.
The Panel cannot agree with Respondent’s statement that because the term “spam” has entered the public domain via common English usage, like “aspirin,” the usage in this case neither disparages nor diminishes the value of any alleged trademark rights Complainant may claim.
In this case the disputed domain name fully incorporates a trademark in which Hormel Foods Corporation (Delaware Cosporation) has common law and registered rights.
In addition the content of the website to which the domain name resolves refers not to a generic use of the term “spam,” but to trademarks owned by the Hormel Foods companies.
For this reasoning, the Panel considers that the disputed domain name is identical to a trademark in which Hormel Foods Corporation (Delaware Corporation) has rights.
As the Panel found above, the source of the dispute
is the termination of the 1994 license agreement concluded between the Hormel
Foods Corporation and David and Sharon
Arnsberger.
Complainant’s
reasoning in explaining Respondent’s the lack of rights or legitimate interests
in the disputed domain name refers explicitly and solely to the fact that the
rights to use the disputed domain name by Respondent, if any, were terminated
when the 1994 license agreement was terminated for material breach.
The valid
termination of said agreement could be questioned at least, from the point of
view of the validity of the termination letters, which apparently are signed by
a different company than that which signed the license agreement.
Nevertheless,
it is not for this Panel to decide on such an issue under the
administrative procedure under the Policy. The Policy is designed to deal with
cybersquatting and not with the resolution of factually complex and legally
complex contractual and/or trademark disputes. See Rudolf Hensel GmbH v. Hensotherm AB, D2002-0634 (WIPO August 31, 2002); Discover New England v. Avanti Group, Inc.,
FA 123886 (Nat. Arb. Forum Nov. 6, 2002).
In
addition, there is also the issue Mr. Booher’s copyright as the co-author of
SPAMARAMA Cookbook to publicly perform and display the copyrighted work
which might justify rights or legitimate interests in having a registered
domain name with the same title as the cookbook title. Whether the copyright is
covered by the trademark license is again, in the Panel’s opinion an issue
which is outside the Policy’s scope.
Finally the
use of the disputed domain name by Respondent for more than eight years, and
the multiple connections existing on the internet to the website under <spamarama.com> may also justify rights and interest in using
the disputed domain name.
The disputed domain name has, since 1998,
hosted the website of the SPAMARAMA Festival. It is hard to believe that the
Hormel Foods companies have not known of the website’s existence and the owner
of the website.
From the facts and evidences presented in the
Complaint, it can be inferred only that the three Hormel companies have known
that the website under the disputed domain name has been existing and it has
been promoting the SPAMARAMA Festival, the SPAMARAMA Cookbook and the SPAM products.
In addition the existence of the legal
disclaimer on the first page of the website under the disputed domain name is
further proof of lack of bad faith in registering the disputed domain name.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the <spamarama.com>
domain name remains with Respondent.
BEATRICE ONICA JARKA
Panelist
Dated: January 12, 2006
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