Kellogg North America Company v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2008001908988
Complainant is Kellogg North America Company (“Complainant”), Michigan, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <wwwkelloggs.com> and <wwwkellogs.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2020; the Forum received payment on August 19, 2020.
On August 19, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwkelloggs.com> and <wwwkellogs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2020 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@wwwkelloggs.com, postmaster@wwwkellogs.com. Also on August 20, 2020, 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 September 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a multinational food manufacturing company that has been in operation since 1906. Complainant has rights in the KELLOGG’S mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 115,348, registered Feb. 6, 1917). Respondent’s <wwwkelloggs.com> and <wwwkellogs.com> domain names are confusingly similar to Complainant’s KELLOGG’S mark. Respondent removes the apostrophe from the mark while also removing the letter “g” in the mark while adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <wwwkelloggs.com> and <wwwkellogs.com> domain names as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects internet users to a webpage that offers third-party links that directly compete with Complainant. Respondent also attempts to sell the disputed domain name.
Respondent registered and used the <wwwkelloggs.com> and <wwwkellogs.com> domain names in bad faith as Respondent attempts to use the disputed domain names to create a likelihood of confusion with Complainant’s KELLOGG’S mark. Respondent has engaged in previous UDRP cases which is evidence of bad faith. Respondent had actual knowledge of Complainant’s rights in the KELLOGG’S mark due to the long-standing use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <wwwkellogs.com> and <wwwkelloggs.com> domain names.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the KELLOGG’S mark due to its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per 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.”). Complainant has provided the Panel with a copy of its USPTO registration for the KELLOGG’S mark (e.g. Reg. No. 115,348, registered Feb. 6, 1917. The Panel finds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wwwkelloggs.com> and <wwwkellogs.com> domain names are confusingly similar to Complainant’s KELLOGG’S mark. Registration of a domain name that contains a mark in its entirety without specific punctuation and removal of a letter in addition to a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See SPTC, Inc. and Sotheby’s v. Kathleen Kim, FA 1734152 (Forum July 14, 2017) (“Respondent’s <sotheebys.com> domain name is identical or confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of Complainant’s SOTHEBY’S mark, less the apostrophe.”). Complainant argues that Respondent removes the apostrophe from the mark while also removing the letter “g” in the mark while adding the “.com” gTLD. The Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <wwwkelloggs.com> and <wwwkellogs.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the KELLOGG’S mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and there is no other evidence to suggest that Respondent was authorized to use the KELLOGG’S mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services. Instead, Respondent’s <wwwkelloggs.com> and <wwwkellogs.com> domain names resolve to a webpage that offers third-party links that compete with Complainant. Use of a disputed domain name to resolve to a webpage that offers third-party links that compete with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of Respondent’s <wwwkelloggs.com> and <wwwkellogs.com> domain names resolving webpages that show links to competing and related services such as “Special K Diet” and “Food Box.” The Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Respondent registered and uses the <wwwkelloggs.com> and <wwwkellogs.com> domain names in bad faith as Respondent attempts to use the disputed domain names to create a likelihood of confusion with Complainant’s KELLOGG’S mark. Use of a disputed domain name to create a likelihood of confusion with a complainant in order to offer competing or related services is evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of Respondent’s domain names resolving webpages that show links to competing and related services such as “Special K Diet” and “Food Box.” This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the KELLOGG’S mark at the time of registering the <wwwkelloggs.com> and <wwwkellogs.com> domain names. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations, the fame of the mark, and that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark and registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwkelloggs.com> and <wwwkellogs.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 23, 2020
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