WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kraft Foods Global Brands LLC v. Domain Privacy LTD, DNS Admin Case No. D2009-0140 1. The Parties
Complainant is Kraft Foods Global Brands LLC, Northfield, Illinois, United States of America, represented internally.
Respondent is Domain Privacy LTD, DNS Admin, Marblehead, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name(s) is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 3, 2009, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On February 3, 2009, F transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 27, 2009.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 17, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant has been engaged in the manufacture, distribution, sale and advertising of food and beverage based products bearing the KRAFT trademark continuously, exclusively and uninterruptedly since as early as January 1909.
KRAFT products are currently sold through out the world and Complainant's total net revenues in the United States itself were in excess of $21 billion dollars as of December 2007.
Complainant's advertising and promotion of KRAFT products was in excess of $1 billion dollars in 2007.
Complainant owns numerous trademark registrations worldwide consisting of or incorporating the word “Kraft”. Some of the United States registrations are:
KRAFT, Registration No. 554187 registered January 29, 1952;
KRAFT, Registration No. 670330 registered November 25, 1958; and
KRAFT, Registration No. 801424 registered January 4, 1966
The Domain Name at issue was registered on October 11, 2005. 5. Parties' Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
The disputed domain name is identical to Complainant's registered trademarks globally. Complainant owns more than 1800 registrations worldwide for trademark KRAFT in various classes of the International Classification.
The disputed domain name is identical not only to Complainant's trademarks but is also identical to the name of Complainant's parent company Kraft Foods Inc., which is the world's second largest food company and largest food company in the United States of America and is commonly referred to as “Kraft Foods”.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent has no rights or legitimate interests in the disputed domain name as the KRAFT trademark is uniquely associated with the Complainant.
Respondent is neither known nor identified by the name Kraft Foods Inc. nor does it operate a business under such name nor did it acquire any trademark or service mark rights in the name KRAFT.
Respondent does not make any legitimate noncommercial or fair use of the disputed domain name and is misleadingly diverting users searching for the Complainant's company information and products to its own website for commercial gain.
Respondent is not a licensee of Complainant nor otherwise authorized by Complainant to apply for registration of or use of the disputed domain name.
Respondent has registered the domain name with the mere intention of blocking Complainant from being able to use the subject domain name for its own legitimate use.
There is no evidence that Respondent had used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is an established cyber squatter and is engaged solely in such business of registering domain names which are identical or confusingly similar to the trademark rights of other third parties and profiting from such domain through putting it into use with monetization schemes.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent has registered the domain name in bad faith solely for the purpose of selling, renting or transferring the domain name to Complainant or to Complainant's competitor for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the disputed domain name.
The disputed domain name was registered by Respondent in order to prevent Complainant from reflecting its own corporate identity in a corresponding domain name. Respondent has engaged in a pattern of such conduct.
Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's web site or location thereby seeking to unjustly enrich itself by appropriating the Complainant's goodwill. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. (Policy paragraph 4(a)).
Because Respondent is in default, the Panel may draw negative inferences from Respondent's default (Rules, paragraph 14(b)). However, the Rules also require that Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3). A. Identical or Confusingly Similar
Complainant has used the KRAFT trademark in connection with its food and beverage products since January 1909 and is the owner of numerous trademark registrations in many different countries some of which are noted above. Given the one hundred years of use of the KRAFT mark and the existence of the United States and foreign trademark registrations for KRAFT, the Panel finds that Complainant has trademark rights in the KRAFT trademark.
The Panel also finds that the domain name is likely to be confused with Complainant's KRAFT trademark because it incorporates Complainant's entire trademark, KRAFT. The Domain Name differs from Complainant's registered KRAFT marks only in that it contains the descriptive term “food” and the generic term “inc”. The addition of such terms does not prevent confusion. Moreover Complainant uses the phrase “Kraft Foods” as a company name. Even if this were not so, the mere addition of a generic or descriptive term would not avoid confusion. See, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (“The fact that the word “autoparts” is added to Complainant's trademark does not eliminate the identity, or at least the similarity, between Complainant's trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.”). See also, Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115 (addition of generic words “healthcare” to form domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (finding domains such as , , , and confusingly similar to plaintiff's PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,', ‘basketball' or ‘soccer' to the PEPSI mark is of no import”).
Therefore, this Panel finds that the domain name is identical or confusingly similar to the trademark in which Complainant has rights in line with violation of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show
(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 non-commercial 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.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. At the time the UDRP Complaint was filed, the domain name offered not only Complainant's products, but also links to products that were in direct competition with the products offered by Complainant. This is not a legitimate use within the meaning of the Policy see, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name. Further, Complainant has never licensed nor otherwise permitted Respondent to use its KRAFT trademark or to apply for any domain name incorporating the mark. There is no relationship between Complainant and Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name and has not used the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
A complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If
respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. The Panel finds that the aforementioned establishes a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue. Moreover, Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
Respondent has not denied Complainant's allegations of bad faith use and registration.
Complainant alleges that Respondent has registered the domain name in bad faith solely for the purpose of selling, renting or transferring the domain name to Complainant or to Complainant's competitor for valuable consideration. The Panel finds it more likely than not that Respondent was aware of Complainant's trademark rights when it registered the disputed domain name. Had Respondent a justifiable purpose for registering a domain name that it well knew, it would have been minimal inconvenience to respond, but Respondent did not. The Panel finds it more likely than not that Respondent registered this domain name at least in part with the intention of selling it to Complainant.
As to Complainant's contentions whether Respondent's passive use of the domain name constitutes bad faith, the relevant issue is not whether Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The relevant circumstances in this case are: Complainant had a well known trademark with an international reputation at the time Respondent registered the domain name; the record contains no evidence of any actual or contemplated good faith use by Respondent of the domain name during the nearly 3 1/2 years that the domain name has been registered; and the Panel can think of no use of the domain name by Respondent that would not be infringing use.
Respondent also has not denied the allegation that it registered and used the domain name “to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” Paragraph 4(b)(iv) of the Policy. Complainant's allegation is supported by evidence annexed to the Complaint, which shows that the domain name has resolved to a domain parking page so that, in the usual way, Respondent earns commission whenever an Internet user visits his website and clicks on a sponsored link. Some of these links lead to product offerings that compete with Complainant's products. The evidence supports the inference that Respondent used Complainant's widely known trademark to attract users to Respondents' website where they are offered not only products of Complainant, but also competing products. This is further evidence of Respondent's intention to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondents' website.
In any event, once it is decided that the domain name was registered by Respondent with knowledge of Complainant's rights in the name, “it is fair to assume that Respondent's intentions are predatory and represent an unfair, abusive threat hanging over the head of the Complainant.” (Digital Platform Iletisim Hizmetler A.S. v. Digiturk Co.,WIPO Case No. D2008-0111). For the above reasons, the Panel finds that Respondent's holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith.”
Moreover, in the same decision, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028:
“The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant's trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well know mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site. And this harm to Complainant is not balanced by a showing of any legitimate use or potential use by Respondent.”
Although “Kraft” may not be a “coined” term, the Panel notes that Respondent here used not only the term “Kraft” but also the terms “Foods Inc,” which, as a combination, can have no conceivable use other than to refer to Complainant. In this respect, the entire phrase - Kraft Foods Inc - is as unusual as a coined phrase and it is similarly unlikely that Respondent had any legitimate purpose for this use.
Finally, Respondent's to failure to reveal the true identity of the owner of this domain name further suggests bad faith use and registration. Unlike many cases involving privacy protection agencies, Respondent here did not respond to the Center's Notice of the Complaint by identifying the true owner. “While there may be a legitimate basis for withholding identifying information from the Whois database (such as guarding against identity theft and Spam) [. . .] those interests do not justify a registrant's failure to reveal its identity in response to the Center's request for verification in the context of a UDRP proceeding.” (Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection,WIPO Case No. D2008-0691).
For these reasons, the Panel finds that the domain name has been registered and is being used in bad faith, and Complainant has proven the third of the three elements required by the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: April 6, 2009
Full & Egal Universal Law Academy