WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Welch Foods, Inc., A Cooperative v. MSS
Case No. D2001-1065
1. The Parties
(a) Complainant is Welch Foods Inc., A Cooperative, a corporation duly organized and existing under the laws of the State of Michigan, having its principal place of business at Three Concord Farms, 575 Virginia Road, Concord, Massachusetts, 01742 U.S.A. ("Welch").
(b) Welch�s contact is Thomas Bockhorst, Esq., Welch Foods, Inc., A Cooperative, Three Concord Farms, 575 Virginia Road, Concord, Massachusetts, 01742, U.S.A.
(c) The Welch�s�s authorized representative in this administrative proceeding is Lawrence R. Robins, Esq., Seyfarth Shaw, World Trade Center East, Two Seaport Lane, Suite 300, Boston, Massachusetts 02210, U.S.A.
(d) Respondent, according to Tucows, Inc.�s OpenSRS database, is MSS, 4700 Elmo Weedon Road #107, College Station Texas 77845, U.S.A. ("Respondent").
(e) Respondent�s Administrative, Technical and Billing contact is Greg Ricks, 4700 Elmo Weedon Road #107, College Station, Texas 77845, U.S.A.
2. Domain Name and Registrar
(a) The domain name at issue is as follows, , (The "Domain Name").
(b) The registrar for the domain name at issue is Tucows, Inc. ("Tucows").
3. Procedural History
(a) On August 31, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail for decision in accordance with the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy") and in hard copy on August 27, 2001.
(b) The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
(c) Payment in the required amount has been made by Welch to the Center.
(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to Tucows in compliance with the Rules on September 13, 2001.
(e) On September 10, 2001, the Center transmitted to Tucows d/b/a/ Domain Direct a request for registrar verification in connection with this case.
(f) On September 12, 2001, the Center received Tucow�s Verification Response, (1) confirming that Tucow had received a copy of the Complaint sent by the Welch in accordance with the Supplemental Rules, (2) confirming that the Domain Name is registered with Tucow, (3) confirming that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name, (4) confirming that the Respondent is the current registrant of the Domain Name (5) providing the full contact details that are available in Tucow�s OpenSRS database for the registrant, the technical contact and the administrative contact for the Domain Name, and (6) stating that the Domain Name is on "hold" status.
(g) On September 13, 2001, the Center transmitted via post/courier and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent. The Center advised that (1) the formal date of the commencement of the administrative proceeding is September 13, 2001, (2) the response was due by October 3, 2001, (3) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (4) the Panel would be entitled to draw such inferences from Respondent�s default as it considers appropriate, (5) Welch�s had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response was due, (6) the fees for the administrative proceeding would be paid in their entirety by Welch�s, (7) the Panel would decide the case within 14 days of its appointment, and (8) the Center could be contacted at stated postal and e-mail addresses, a stated telephone number, and a stated fax number.
(h) On October 4, 2001, the Center transmitted to Welch and the Respondent Notification of Respondent Default advising that Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response and that the Center shall proceed to appoint a single-member Administrative Panel as designated by Welch.
(i) November 1, 2001, the Center transmitted to the parties, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and that the decision would be due on November 15, 2001.
(j) On November 1, 2001, the Center transmitted the file in this case to the appointed panelist, Gaynell Methvin.
4. Factual Background; Parties� Contentions
a. The Trademarks
The Complaint (�� 12 � 45) is based on at least 200 trademark registrations by Welch�s registered in the U.S. Patent and Trademark Office ("USPTO") and elsewhere around the world for the mark WELCH�S pursuant to registrations evidenced in Annex C and Annex D of the Complaint.
"14. Complainant Welch�s is the world�s leading producer of Juice, jam and jelly products made from Concord and Niagara grapes.
15. Headquartered in Concord, Massachusetts, USA, Welch�s is a global producer with sales in more than 30 countries around the world, including the following:
North America: United States, Canada
Caribbean/South America: Bahamas, Barbados, Bermuda, Columbia, Dominican Republic, Grenada, Haiti, Jamaica, Netherlands Antilles, Puerto Rico, St. Vincent, Suriname, Trinidad, Venezuela, Virgin Islands, Windward Islands.
Central America: Belize, Costa Rica, El Salvador, Guatemala, Honduras, Mexico, Panama
Asia/Pacific: Australia, Guam, Hong Kong, Indonesia, Japan, Korea, Philippines, Saipan, Singapore, Taiwan, Thailand, China
Europe: England, France, Germany, Ireland, Italy, Netherlands, Spain
16. Since 1869, Welch�s has substantially, continuously and exclusively used, in connection with its business the marks WELCH�S or WELCH alone and as a component of composite marks incorporating the mark �Welch�s.�"
b. The Complaint
Welch in support of its position asserts the following:
"A. Complainant and Its Marks
13. This action arises out of Respondent�s use of the famous WELCH�S marks owned by Complainant Welch Foods Inc., A Cooperative ("Welch�s" or "Complainant"), which are protected by state and federal law in the United States and throughout the world. In willful disregard of Complainant�s Rights, Respondent has registered as an Internet domain name in violation of its registration agreement with the Registrar, United States trademark law, the trademark laws of other countries in which Complainant does business and owns trademark registrations, and other federal and state laws.
* * *
17. Complainant Welch�s is the owner of the more than 200 registered United States and foreign trademarks. A list of Welch�s registered United States and foreign trademarks is attached hereto as Annex C. True and accurate copies of the United States registrations are attached hereto as Annex D.
18. As a result of such substantial, continuous and exclusive use of the name and mark WELCH�S, Complainant has built up substantial goodwill in the mark WELCH�S. Such goodwill extends throughout the United States, including Texas where respondent MSS ("MSS" or "Respondent") is located.
19. Since at least as early as 1900, Welch�s has spent substantial amounts in advertising and promoting its fruit products under the WELCH�S marks. Over its past five fiscal years, Welch�s has spent on average over $21 million advertising and promoting its products under the WELCH�S marks. Welch�s advertises its products through national and regional television, as well as in print media, in-store displays and through its Web site located at . Examples of Welch�s advertising are attached hereto as Annex E.
20. Complainant began selling its WELCH�S brand grape juice in the United States as early as 1869 and has exported products around the world since 1920.
21. Complainant is the world�s leading marketer of Concord and Niagara grape-based products, including grape juice and jelly. The company markets a variety of other fruit-based products, including 100% juices, juice cocktails and drinks in the following forms: bottled, refrigerated, single-serve, and frozen and shelf-stable concentrates, as well as a number of fruit spread products under the Welch�s brand name. Complainant�s revenues for its most recent fiscal year were in excess of $650 million, up from total revenues in excess of $500 million five years earlier. Complainant presently has an 18% share of the market for non-citrus fruit juices and a 17% share of the market for fruit jams, jellies and spreads.
22. By virtue of the quality of its products, and over 100 years of extensive advertising and promotion, the WELCH�s mark is a famous mark, well known to and well regarded by the consuming public.
23. By virtue of its reputation and longtime use of the WELCH�s family of marks, Complainant has gained enforceable rights in such marks in the United States, where both Complainant and Respondent are located, and elsewhere. Furthermore, the registration of Complainant�s WELCH�S marks are prima facie evidence of the validity of such registrations and creates a presumption that the WELCH�S marks are inherently distinctive.
B. Complainant�s Use of the Internet
24. .Since February 1996, Welch�s has operated a Web site at the address .
25. Welch�s uses its Web site to advertise and promote its products. Welch�s Web site also allows current and potential customers to obtain health and nutrition information, recipes, and register with the site to receive product updates, coupons and special values. Copies of sample pages from Complainant�s Web site are attached hereto as Annex F.
26. The Internet has become an important communication and marketing tool for Welch�s.
C. Complainant�s Contact With Respondent
27. On April 26, 2001, after learning of Respondent�s registration of the domain name, counsel for Complainant sent a cease and desist letter to the then current address of Respondent, as listed in the administrative contact information (See Annex G), notifying Respondent of its rights in the name WELCH�S. A true and accurate copy of this correspondence is attached hereto at Annex H.
28. On May 23, 2001, Complainant�s counsel sent another letter to Respondent requesting that Respondent reply to Complainant�s April 26, 2001 letter by May 30, 2001. A true and accurate copy of this correspondence is attached hereto as Annex I.
29. Respondent never replied to Complainant�s letters. It appears the Respondent subsequently moved from Louisiana to its current location in College Station, Texas.
D. Respondent�s Unauthorized Use of Complainant�s Mark
30. Subsequent to Welch�s use and registration of the WELCH�S marks, and without the consent or authorization of Welch�s, Respondent registered the domain name with Tucows, Inc. ("Tucows") on March 6, 2000. A true and accurate copy of Tucows� WHOIS database printout indicating the registrant for and date on which the domain name was registered is attached hereto as Annex A.
1. The domain name is confusingly similar to Complainant�s Marks
31. The domain name is identical in sound, and virtually identical in appearance, to Complainant�s registered WELCH�S trademarks. By registering a common misspelling of the mark WELCH�S, Respondent will cause confusion, mistake and deception as to the source and origin of the domain name. Further, use of the domain name dilutes the famous WELCH�S marks.
32. Registration of a domain name that varies from a distinctive mark by just one letter creates sufficient similarity between the mark and the domain to render it confusingly similar. The only difference between Complainant�s trademark and the domain name registered by Respondent is the inclusion of a second "e" - "welchs" as opposed to "welches." When spoken, "Welch�s" and "welches" sound exactly the same. Furthermore, entering "Welches grape" or "Welches grape jelly" into the Google search engine reveals that "welches" is a common misspelling of the WELCH�S mark. A printout of a segment of the Google search result for "Welches grape" is attached hereto at Annex J. Numerous Panel decisions support the view that domain names containing common misspellings of trademarks are confusingly similar to such marks. See e.g., Bally Total Fitness, Inc. v. Mike Torres, a/k/a/ Dallas Internet Services, a/k/a/ Global Media Consulting, WIPO Case No. D2001-0546 (June 28, 2001) (> held to be confusingly similar to ); Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548 (July 21, 2000) ( held to be confusingly similar to ); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000) ( and held to be confusingly similar to THE WALL STREET JOURNAL mark). Copies of these decisions are attached here to a Annex K.
33. Based on Respondent�s registration and use of a domain name that is a phonetic equivalent and a common misspelling of Complainant�s famous and distinctive WELCH�S marks, and Complainant�s well known, and longstanding use of such marks in the area of fruit {based} products, Respondent�s domain name is substantially similar to Complainant�s WELCH�S marks.
2. Respondent has no legitimate interest with respect to the domain name
34. Respondent has no rights or legitimate interest with respect to the mark WELCH�S or the domain name .
35. Upon information and belief, the domain name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent.
36. Respondent has not make a bona fide noncommercial, fair use of the domain name .
37. The domain name currently resolves to a portal Web site for an entity called RapidS. The Web page that appears when is entered into any commercial Internet browser contains links to other Web pages in categories such as "cars, casino, computers, entertainment, health, real estate, and shopping." A printout of the page is attached hereto as Annex L. The Web page that appears when is entered into any commercial Internet browser is the identical Web page that appears when is entered into any commercial browser. A printout of the page is attached hereto as Annex M. The domain name is also registered by Respondent. A printout of the WHOIS record is attached hereto as Annex N.
38. Complainant never authorized, licensed or otherwise permitted Respondent or anyone else to use the WELCH�S marks, the word WELCHES or any confusingly similar variations thereof.
39. Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name that comprises, incorporates, or is confusingly similar to Complainant�s famous WELCH�S marks.
3. Respondent registered and used the domain name in bad faith
40. Taken in totality, the circumstances surrounding Respondent�s registration of the domain name demonstrate that the Respondent registered and is using the domain name in bad faith in order to divert the Internet traffic of persons intending to find Web sites legitimately associated with Complaint by adopting a domain name that is a Phonetic equivalent of Complainant�s famous mark.
41. Respondent is using the domain name with the intent to misleadingly divert consumers for commercial gain. Paragraph 4(b) of the Policy sets forth circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (See Policy, para. 4(b)). By using the domain name , Respondent 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 its Web site or location or of a product or service on its Web site location." The only difference between Complainant�s trademark and the domain name registered by Respondent is the inclusion of a second "e" - "welchs" as opposed to "welches." Respondent is guilty of "typo-piracy," in essence a deliberate attempt to attract or divert Internet users who make a common error or spelling mistake in their Internet search. See e.g., Neuberger Berman Inc. v. Alfred Jacobson, WIPO Case No. D2000-0323 (June 12, 2000). A copy of this decision is attached hereto as Annex O. Several Panel decisions have held that the registration of a domain name that incorporates a misspelling of a well-known mark in an attempt to attract, for commercial gain, Internet users to its web site, is sufficient evidence of bad faith. See e.g., Bally Total Fitness, Inc. v. Mike Torres, a/k/a/ Dallas Internet Services, a/k/a/ Global Media Consulting, WIPO Case No. D2001-0546 (June 28, 2001); Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548 (June 21, 2000); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000). Copies of these decisions are attached here to as Annex K.
42. Respondent currently markets on the site links to other Web pages in categories such as "cars, casino, computers, entertainment, finance, health, real estate, shopping and travel." A printout of the page is attached hereto as Annex L. Welch�s has neither endorsed nor sponsored any of these products or services.
43. Respondent�s bad faith registration of the domain name is evidenced by its choice of a domain name having nothing to do with Respondent�s business, but is a common misspelling of a world-famous trademark.
44. Section 2 of the ICANN Policy provides that a domain name registrant represents and warrants to the registrar that, to its knowledge, registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The Panel has noted that in the case of a world-famous mark it is very unlikely, or nearly impossible, that the registrant would not be aware of infringing on the rights of the trademark holder. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000); The James H. W. Thompson Foundation and The Thai Silk Company Limited v. Panarach Puangpetch, WIPO Case No. D2000-0436 (July 10, 2000). Copies of these decisions are attached here to at Annex P.
45. Based on the foregoing, Respondent has registered and used the domain name in bad faith."
c. Remedies Requested
As for relief, Welch�s requests at Paragraph 46:
"In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, Welch requests the Administrative Panel appointed in this administrative proceeding issue a decision that be transferred to the Complainant."
d. Respondent�s Answer
Respondent has filed no answer, or any other document, with the Center.
5. Discussion and Findings
Paragraph 4 of the Policy directs that Welch must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue are identical or confusingly similar to the WELCH�S trademark, and
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Identical or Confusingly Similar
No challenge has been leveled with respect to (1) the validity of any WELCH�S trademarks or service marks, (2) Welch�s rights in those marks with respect to Welch�s services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by Welch as to promotion of the marks, use of the marks, and total sales of services and goods under the marks. Accordingly, such facts are found to be true.
Welch urges, and has the burden of proving, that the Domain Name is either identical to, or confusingly similar to, the WELCH�S trademarks.
On its face, the Domain Name incorporates the term "Welch�s." Close identity to the WELCH�S trademarks is clear. In light of the truth and controlling nature of the facts and legal arguments set forth in the Complaint, paragraphs 12 � 26, 31 - 33, the Panel finds that the Domain Name is confusingly similar to the WELCH�S trademarks.
b. Rights or Legitimate Interests
In light of the foregoing, it is found that this record demonstrates that Respondent has no rights or legitimate interests vis-a-vis .
Respondent has failed to prove any of the
three circumstances set out in Paragraph 4(c) of the Policy, viz.:
(i) before any notice to Respondent of the dispute, Respondent�s use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Respondent or a related entity has been commonly known by the domain name, and
(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
c. Registration and Use in Bad Faith
Registration of the Domain Name in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Despite Respondent�s default, bad faith must nevertheless be proved by Welch.
The facts asserted by Welch in support of its position that Respondent�s registration was in bad faith are found in the Complaint in paragraphs 40 - 45. These facts are incorporated herein by reference and are found to be true. As such, these uncontroverted facts and relevant legal authority demonstrate that Respondent has registered the domain name in bad faith.
6. Decision
The Panel decides that Welch has carried its burden of proving (a) the Domain Name here is identical to or confusingly similar to the WELCH�S mark, (b) Respondent has no rights and no legitimate interests in respect of the Domain Name, and (c) the Domain Name has been registered and used in bad faith by Respondent. Accordingly, the Panel requires that the registration of the domain name be transferred to Welch.
Gaynell C. Methvin
Sole Panelist
Dated: December 17, 2001
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