WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Frozfruit Company v. Maui Bound Media Group
Case No. D2000-0851
1. The Parties
The Complainant is The Frozfruit Company, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Freehold, New Jersey, USA.
The Respondent is Maui Bound Media Group, with address in Dallas, Texas, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on July 22, 2000, and by courier mail received by WIPO on July 28, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On July 31, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc (with the Registrar�s Response received by WIPO on August 3, 2000). On August 4, 2000, WIPO completed its formal filing compliance requirements checklist.
(b) On August 4, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent (and to Respondent�s Administrative Contact and Technical Contact) via e-mail, telefax and courier mail. Courier receipts indicate successful delivery of the notification to the contact addresses provided for Respondent, its Administrative Contact and Technical Contact. WIPO�s telefax transmission report indicates successful transmission of the notification to Respondent�s Technical Contact.
(c) On August 24, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail, telefax and courier mail.
(d) On August 28, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 28, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On August 30, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 12, 2000. On August 30, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant (through its predecessor-in-interest) has registered the trademark "LEMON CHILL" on the Principal Register of the United States Patent and Trademark Office (USPTO), Reg. No. 1,945,098, dated January 2, 1996, covering naturally flavored Italian ices (Complaint, Exhibit C) 1. Complainant has registered several other "CHILL"-formative marks (e.g., "STRAWBERRY CHILL) (id.). Complainant�s registration for "LEMON CHILL" is valid and subsisting. The "LEMON CHILL" mark has been used in commerce since at least 1996 (based on the aforesaid registration), and continues to be used in commerce. The aforesaid trademark registration indicates a date of first use of January 1, 1989.
Complainant advertises and sells frozen desert products under the "LEMON CHILL" trademark (id., Exhibits E & F). Such products are sold at the retail level by a substantial number of grocery chain stores and other retail stores in the United States (id, Annex G).
According to the registrar�s verification response to WIPO, dated August 3, 2000, "Maui Bound Media Group" is the listed registrant of the domain name "LEMONCHILL.COM". The Administrative Contact is "Jones, Gary". The addresses listed for the registrant and the Administrative Contact are identical. (Registrar�s Response, supra). A Network Solutions� WHOIS database search indicates that the record of registration was created on February 3, 1999, and that the record was last updated on March 13, 2000 (Complaint, Exhibit A).
A printout, dated August 4, 2000, of a web page identified by the address "www.", is headed with "Lemon Frost". This webpage states, inter alia, "Our product is based on the ORIGINAL Italian recipe as seen on the �Martha Stewart� show!" and "Sold for concession sales � sports stadiums, theme parks, County and State fairs, etc." Contact information on the web page includes the physical address and telephone number listed for Respondent in its domain name registration. The listed e-mail address is "�@". (WIPO case file document)
Complainant has sent two cease and desist demands to Respondent (letters to Respondent from J. Allison Strickland of May 20, 1999 and from Rose Auslander of April 4, 2000, Complaint, Exhibits H & K). Respondent initially reacted by removing reference to "LEMON CHILL" from the text of its web page (substituting "Lemon Frost"), and indicating that it would consider selling the disputed domain name to Complainant (e-mail from Dona Burge to Allison Stickland, June 15, 1999, id., Exhibit I). Respondent thereafter refused to transfer the disputed domain name to Respondent, indicating that it had registered the name in good faith and had spent considerable funds in promoting its potential (incomplete e-mail to Rose Auslander originating from MauiBabes@, April 19, 2000, id., Exhibit L).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states in its own words:
11. "Complainant's basis for its complaint is its use, registration and ownership of the well-known trademark LEMON CHILL.
"Complainant�s Extensive Use of Its LEMON CHILL Mark
12. "Complainant, or its predecessor in interest, Moore Enterprises, Inc., a corporation of the State of Texas (�Moore�), has used the mark LEMON CHILL for Italian ices since January 1989, and a family of CHILL marks since that date. Complainant and its predecessor in interest have invested a substantial amount of time, effort and money in promoting the CHILL family of marks. As a result, the marks have become famous for Complainant's goods and have come to represent enormous goodwill for Complainant.
13. "By assignment from Moore, Complainant owns numerous U.S. trademark registrations for its CHILL marks, including the following:
[Chart omitted]
Complainant intends to rely in this proceeding upon the registrations listed above, and copies of the registration certificates are attached as [an Exhibit]. A copy of the recordation of assignment from Moore of the registrations marked with a dagger in the above chart is attached as [an Exhibit]. 2
14. "There is no issue as to priority. Complainant's rights in the trademarks listed in the above chart exist from dates long prior to any date on which Respondent may rely. All of the registrations are valid, subsisting, and in full force and effect.
15. "As shown in the Notice of Opposition in Moore Enterprises, Inc. v. Clark Distributing Company, Inc. attached hereto as [an Exhibit], the sales of frozen Italian ices under Complainant�s CHILL marks since 1989 have been extensive. As also shown in that Exhibit, there has been third party recognition of the rights built up in the LEMON CHILL mark through such use.
16. "Today, Complainant uses its LEMON CHILL and other CHILL marks on frozen confections, frozen Italian ices, and a wide variety of promotional items such as t-shirts, hats, pens, box cutters, and golf balls. Attached as Exhibit E are photocopies of packaging showing Complainant�s use of the LEMON CHILL and other CHILL marks. Attached as [an Exhibit] are photocopies of numerous items and materials promoting Complainant�s LEMON CHILL products. Complainant further promotes those goods through its web site, which can be reached through the domain names and , and such promotion may readily be seen by viewing that site.
17. "Complainant�s customers for goods sold under its CHILL marks are consumers of desserts and frozen foods. Complainant sells goods under its CHILL marks: (a) to distributors, who then sell the goods to retailers such as supermarkets, grocery stores, convenience stores, delis, mom and pop stores, bodegas, and other retail food outlets; and (b) to the food service industry, including vendors at amusement and sports venues such as stadiums, amusement parks and theme parks. Attached as [an Exhibit] is a printout of pages from Complainant�s web site listing numerous sample retail outlets for its LEMON CHILL goods.
"Respondent Has No Legitimate Interest In LEMONCHILL.COM
18. "The Domain Name complained of here is identical and/or confusingly similar to Complainant's lemon chill Mark. Moreover, Respondent sells goods identical to Complainant�s � frozen ices. Given the fame of Complainant�s LEMON CHILL mark, on seeing the Domain Name, consumers will believe that it is related to Complainant. Moreover, consumers who search the Internet for LEMON CHILL ices by using that mark will be directed to Respondent�s sales of an identical product. This not only increases the likelihood of confusion, but allows Respondent to benefit from initial interest confusion created by its use of LEMONCHILL.COM.
19. "Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. There exists no relationship between Complainant and Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the LEMON CHILL mark.
20. "There can be no doubt that Respondent has registered and is using the Domain Name in bad faith under Paragraph 4(b)(i) and 4(b)(ii) of the Policy. Respondent has clearly registered the Domain Name primarily to sell, or otherwise transfer the Domain Name, or to prevent Complainant from using its LEMON CHILL mark in a corresponding domain name, or to divert traffic for his own benefit.
21. "Respondent�s actions confirm that it has registered and is using the Domain Name in bad faith. Indeed, Respondent has even attempted to sell the LEMONCHILL.COM name. On May 20, 1999, Complainant wrote to Respondent, explicitly placing it on notice of Complainant�s rights in the LEMON CHILL mark and objecting to Respondent�s use of the domain name LEMONCHILL.COM (copy attached as [an Exhibit]). By e-mail dated June 15, 1999, Respondent replied that it �will consider selling the domain name� (emphasis added). A copy of this email is attached as [an Exhibit].
22. "After Respondent refused to cease use of the LEMONCHILL.COM domain name unless Complainant agreed to buy it, Complainant applied to place the Domain Name on hold under Network Solutions� former Domain Name Dispute Policy. The name was placed on hold, as discussed in the January 10, 2000 letter from Network Solutions attached as [an Exhibit]. As noted in that January 10 letter, NSI changed that policy, in the beginning of this year, reactivating domain names that had been placed on hold.
23. "In the Spring of this year, Complainant discovered that Respondent had resumed use of its web site at LEMONCHILL.COM address. On April 4, 2000, Complainant sent a letter to Respondent reiterating its rights in the registered LEMON CHILL mark and protesting the resumed use of the LEMONCHILL.COM domain name (copy attached as [an Exhibit]). In response, Complainant received an incomplete email by which Respondent refused to comply with Complainant�s request. Respondent did not respond to Complainant�s request for a complete copy of this email. Attached as [an Exhibit] is a printout showing both the incomplete message and Complainant�s request that it be completed.
24. "That Respondent has targeted Complainant is clear from Respondent's own bad-faith conduct and the overwhelming fame of the LEMON CHILL name and mark.
25. "Given the fame of LEMON CHILL for Italian ices, and given that Respondent is selling and promoting the identical goods to consumers at its web site at the LEMONCHILL Domain, there can be no dispute that the Domain Name is intended to and does refer to Complainant�s LEMON CHILL mark. See, e.g., Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 at p. 5 (�VEUVECLICQUOT.ORG is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith�); accord Harrods Limited v. Robert Boyd, WIPO Case No. D2000-0060.
26. "Clearly, Respondent could only have registered the LEMONCHILL.COM domain name -- which is confusingly similar to Complainant's LEMONCHILL mark -- to capitalize on Complainant's hard-earned goodwill." (Complaint)
Complainant requests that the Panel ask the registrar to transfer the domain name "" from Respondent to it, or that the name be cancelled with prior notice to Complainant so that it may undertake registration (id., para. 27).
B. Respondent
Respondent did not reply to Complainant�s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 3. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the transmission of telefax that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant�s undisputed representations (id., para. 15(a)).
Complainant is the holder of a trademark registration for the word mark "LEMON CHILL" and has used that mark in commerce for a substantial period of time (see Factual Background, supra) 4. Complainant�s registration of the "LEMON CHILL" mark on the Principal Register at the PTO establishes a presumption of its validity in U.S. law 5. The Panel determines that Complainant has rights in the trademark "LEMON CHILL". Based on the January 2, 1996, date of Complainant�s registration of the trademark "LEMON CHILL", and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the mark arose prior to Respondent�s registration, on February 3, 1999, of the disputed domain name "".
Respondent has registered the domain name "". This name is identical to Complainant�s trademark "LEMON CHILL", except that (1) the domain name eliminates the space between the words "LEMON" and "CHILL", (2) the domain name adds the generic top-level domain name (gTLD) ".com", and (3) the domain name employs lower case letters, while the mark is generally used with initial capital letters.
Insofar as domain names are not case sensitive, and the elimination of space between terms is dictated by technical factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "", and the elimination of spaces between the words "LEMON" and "CHILL" to form that name, are differences without legal significance from the standpoint of comparing "" to "LEMON CHILL" 6. Similarly, the addition of the gTLD name ".com" is without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods 7.
For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain name "" is "identical" to Complainant�s trademark, since Respondent�s domain name "", is without doubt confusingly similar to Complainant�s trademark "LEMON CHILL".
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c)).
There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name.
There is evidence on the record of this proceeding that Respondent sold frozen desert products using Complainant�s trademark "LEMON CHILL" on a web page identified by "" prior to receiving a cease and desist demand from Complainant (e-mail of June 15, 1999 from Dona Burge to Allison Strickland, Complaint, Exhibit I) 8. Complainant�s trademark was registered substantially prior to Respondent�s use of it to advertise and sell a competing product. Registration of a trademark on the Principal Register at the USPTO constitutes constructive notice of the registrant�s claim of ownership of the mark 9. In addition, there is substantial evidence that Complainant�s mark is well known in the food products industry, suggesting that Respondent would have known of Complainant�s rights in its mark prior to adopting it. An offering for sale of a competing product using Complainant�s mark is not a bona fide offer for sale, and does not establish rights or legitimate interests in the disputed domain name. Respondent�s modification of its conduct following notice of a dispute from Complainant does not retroactively establish rights for Respondent in the disputed domain name based on bona fide use.
On the record of this proceeding, Respondent did not undertake a bona fide offering for sale of goods using the disputed domain name before notice of the dispute 10. Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has used Respondent�s trademark in its domain name to attract to its website potential purchasers of a product that competes with one that Complainant sells under its mark. This creates a likelihood of confusion as to the source of Respondent�s product, and as to whether Respondent and Complainant are affiliated. Respondent has used Complainant�s trademark in its domain name to attract potential customers of Complainant. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "" to the Complainant.
7. Decision
Based on its finding that the Respondent, Maui Bound Media Group, has engaged in abusive registration of the domain name "" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "" be transferred to the Complainant, The Frozfruit Company.
Frederick M. Abbott
Sole Panelist
Dated: September 12, 2000
Footnotes:
1. Complainant disclaimed an exclusive right to use "LEMON", apart from the mark as shown (Complaint, Exhibit C).
2. The Panel notes that the referenced copy of recordation does not appear to have been included with the complaint transmitted to WIPO.
3. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
4. The Panel does not find it necessary to consider the relevance of Complainant�s other "CHILL"-formative marks.
5. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
6. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).
7. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
8. Although Respondent asserted in its e-mail to Complainant that its "webmaster" mistakenly used Complainant�s mark on its web page in connection with its initial sales efforts, the Panel is not persuaded that Respondent was unaware of or should avoid responsibility for its own highly visible (i.e., on its own website) conduct.
9. 15 USCS � 1072.
10. In the interests of administrative efficiency, the Panel does not address whether Respondent�s use of Complainant�s trademark in its web address alone would also have obviated a finding of bona fide offering for sale.
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