Kellogg North America Company v. George Clark / 420 group
Claim Number: FA1610001697761
Complainant is Kellogg North America Company (“Complainant”), Michigan, United States. Respondent is George Clark / 420 group (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <kelloggscornflakes.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2016; the Forum received payment on October 12, 2016.
On October 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kelloggscornflakes.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@kelloggscornflakes.com. Also on October 12, 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 November 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a multinational food manufacturing company founded in 1906 and with current annual sales in excess of $13 billion. It sells breakfast foods, snacks, frozen foods, and beverages in more than 180 countries. Complainant registered the KELLOGG’S CORN FLAKES mark in the United States in 1986; it is also registered elsewhere around the world.
According to Complainant, the disputed domain name is identical to Complainant’s mark, save for the removal of the apostrophe from the term “Kellogg’s” and the affixation of the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, and Complainant has not licensed, authorized, or permitted Respondent to use its mark. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to direct Internet users to a website that promotes the legalization and use of cannabis/marijuana, which, under current US law is still largely illegal. Complainant cites UDRP precedents to support its position.
Further, according to Complainant, Respondent registered and is using the disputed domain name in bad faith. First, Respondent offered to sell the domain name to Complainant for five thousand pounds. Second, Respondent uses the domain name to feature adult-oriented content, namely the promotion and legalization of cannabis/marijuana. Third, because of Complainant’s well-known trademarks, it is clear that Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s mark and rights therein. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark KELLOGG’S CORN FLAKES dating back to 1986.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that promotes illegal activities. Further, it offered the disputed domain name for sale.
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 disputed domain name is identical to Complainant’s mark, save for the removal of the apostrophe from the term “Kellogg’s” and the affixation of the “.com” gTLD. Respondent also removed the spaces between the words of Complainant’s mark. Panels have held that these changes do not serve to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). As such, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed, authorized, or permitted Respondent to use its mark. Respondent is not commonly known by the disputed domain name: the Panel notes that the WHOIS information merely lists “george clark” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to direct Internet users to a website that contains information regarding the legalization and use of cannabis/marijuana. Use of marijuana is still largely illegal. Panels have decided that a respondent’s use of a domain name to promote an illegal activity does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement 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)). Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent offered to sell the disputed domain name to Complainant for five thousand pounds: specifically, in response to Complainant’s cease and desist letter, sent on August 1, 2016, Respondent replied stating, in part, “We are happy to sell the name to yourselves immediately for ₤5,000 five thousand pounds sterling.” Complainant responded and offered to reimburse Respondent the registration fee paid for the disputed domain name, and Respondent declined stating, “Please come back to us with a serious offer.” Panels have held that a respondent’s offer to sell a domain name for an amount in excess of the out-of-pocket costs associated with the acquisition of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). For this reason, the Panel finds that Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy.
Further, as already noted above, Respondent uses the disputed domain name to resolve to a web site whose content concerns the promotion of an illegal activity. Panels have held that a respondent’s use of a domain name to engage in illegal activity constitutes bad faith registration and use. See Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kelloggscornflakes.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 7, 2016
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