Kellogg North America Company v.Tulip Company / Tulip Trading Company
Claim Number: FA1604001671756
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Tulip Company / Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwpringles.com>, registered with Key-Systems GmbH.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2016; the Forum received payment on April 22, 2016.
On April 26, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <wwwpringles.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@wwwpringles.com. Also on April 29, 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 May 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <wwwpringles.com> domain name is confusingly similar to Complainant’s PRINGLES mark.
2. Respondent does not have any rights or legitimate interests in the <wwwpringles.com> domain name.
3. Respondent registered and uses the <wwwpringles.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the PRINGLES mark in connection with selling snack chips. Complainant has registered the PRINGLES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 916,415, registered July 13, 1971).
Respondent registered the <wwwpringles.com> on December 5, 2015, and uses it to resolve to a website featuring pay-per-click hyperlinks that purport to redirect to Complainant’s own sites and unrelated sites.
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 Panel finds that Complainant has demonstrated rights in the PRINGLES mark under Policy ¶ 4(a)(i) through its registration with the USPTO. Panels have found registration with the USPTO to be sufficient to establish rights in a mark, even where respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <wwwpringles.com> domain name incorporates Complainant’s mark entirely, merely deleting the period between the “www” and the mark, and adding the generic top-level domain (“gTLD”) “.com.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Bare Escentuals Beauty, Inc. v. Namase Patel / Mumbai Domains, FA 1572625 (Forum Sept. 1, 2014) (determining that the <wwwbareminerals.com> domain name is confusingly similar, as the domain name simply deletes the punctuation after the “www” prefix, and adds the generic top-level domain “.com”). Therefore, the Panel finds that Respondent’s <wwwpringles.com> domain is confusingly similar to Complainant’s PRINGLES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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. Gerberg, FA 780200 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <wwwpringles.com> domain name, and Respondent is not commonly known by the disputed domain name. The WHOIS information for the <wwwpringles.com> domain name lists “Tulip Company” as the registrant. Complainant states that it has not given Respondent permission to use its PRINGLES mark. Therefore, in light of the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <wwwpringles.com> domain name. The Panel notes that the disputed domain name resolves to a website featuring pay-per-click hyperlinks that purport to redirect to Complainant’s own sites and unrelated sites, including “Free Movie Apps,” and “A Free Dating Site.” Panels have found that a respondent’s use of a complainant’s mark to operate a pay-per-click website does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent’s use of the <wwwpringles.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the<wwwpringles.com> domain name to create a likelihood of confusion with Complainant and its PRINGLES mark in order to profit from users looking for Complainant’s site. The Panel agrees and finds that Respondent’s use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”).
Complainant asserts that Respondent was on notice of Complainant’s rights in the PRINGLES mark prior to domain name registration because Respondent included the entire mark in the domain name. Complainant states that Respondent ought to be held to a constructive notice standard. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights due to the long-standing registration and use of the mark. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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")."
Complainant contends that Respondent engaged in typosquatting because the <wwwpringles.com> domain name incorporates the entire PRINGLES
mark, and added the “www” prefix with the intent to redirect users who forget
to type a period between the prefix and the domain name while attempting to
reach Complainant’s website. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Black
& Decker Corp. v. Khan, FA 137223 (Forum
Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to
“ensnare those individuals who forget to type the period after the ‘www’
portion of [a] web-address,” which was evidence that the domain name was
registered and used in bad faith.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwpringles.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 31, 2016
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