Complainant is Del Monte Foods, Inc. of San Francisco, California, United States of America (“United States” or “U.S.”), represented by Ballard Spahr, LLP, United States.
Respondent is Kensington Capital Group, Inc. of Monterey, California, United States, represented by Michael Kirch. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2014. On December 18, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On December 19, 2014, the Registrar transmitted to the Center by e-mail 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 January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Response was filed with the Center on January 21, 2015.
Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraph 4(b)(iv) and (v), Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center accordingly appointed Robert A. Badgley (Presiding Panelist), Michelle Brownlee and Gregory N. Albright as panelists in this matter on January 30, 2015. The Panel finds that it was properly constituted. Each member of 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.
Complainant submitted an unsolicited reply to Respondent’s Response on January 30, 2015, and Respondent submitted a reply thereto on January 30, 2015. In its discretion, the Panel has considered these supplemental submissions. 4. Factual Background
Complainant is a leading purveyor of food and beverages in the United States, and has used the mark DEL MONTE for 120 years to identify and distinguish its various offerings. Some of Complainant’s DEL MONTE marks have been registered for more than 40 years. Complainant asserts, and there is little reason to doubt, that its DEL MONTE mark is famous.
Michael Kirch is the owner of Kensington Capital Group, Inc., a firm based in Monterey, California. Kirch and Kensington Capital Group, Inc. will be referred to interchangeably as “Respondent” unless the context requires more precision.
Respondent owns and operates a real estate business based in Monterey called Kensington Realty Group, Inc. Respondent’s main website is located at “”. That website welcomes visitors to “a unique, full-service real estate company serving the Monterey Peninsula & beyond”.
The Del Monte Forest is located within the Monterey Peninsula region of California.
Respondent registered the Domain Names on August 22, 2006 (), May 12, 2010 (), and January 5, 2013 (). The Domain Names resolve to Respondent’s website at “”. Respondent claims that he registered these Domain Names because the term Del Monte “is readily recognizable by people who live on the Monterey Peninsula,”
On February 6, 2008, Kirch applied to register with the Secretary of State of California a corporation named Del Monte Realty, Inc. That corporation is still active. Respondent registered another domain name, not at issue in this case, , on December 11, 2006. That domain name resolves to a website which states in part:
“If you are retired or nearing retirement and have a significant amount of wealth tied up in real estate, you should consider selling to preserve your wealth, provide liquidity and increase your income. Kensington Realty Group, an affiliate of Del Monte Realty, will represent you with the goal of maximizing your investment return.”
On July 11, 2007, Respondent filed for fictitious business names Del Monte Farms and Del Monte Express, and renewed these fictitious business names on July 9, 2012. Respondent asserts that he did so “with the sole purpose of starting a business with the said names”. Respondent also ordered business cards, and, on July 2, 2007, filed a trademark application with the United States Patent & Trademark Office (“USPTO”) for the word mark DEL MONTE FARMS. The goods and services named in the application were “cut vegetables” and “cut fruits,” and the claimed first use in commerce was June 15, 2007.
According to Respondent, Complainant sent Respondent an “aggressive” letter in 2007 threatening action, and Respondent did not respond to said letter. On October 5, 2007, the USPTO refused Respondent’s trademark application because the proposed mark, coupled with the proposed goods and services, created a likelihood of confusion with Complainant’s family of DEL MONTE and DEL MONTE-formative marks. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the three Domain Names at issue in this case. According to Complainant, Respondent’s alleged business plans for the Domain Names are mere pretexts, as demonstrated by the eight-year passage of time since the first Domain Name was registered. B. Respondent
Respondent asserts that he has rights or legitimate interests in the Domain Name, namely, that he intends to use the Domain Names to launch a grocery store business (and has annexed various evidence of such preparations such as Bylaws, IRS correspondence, business cards, etc.) unrelated to Complainant’s business and in a manner that will not cause consumer confusion. Respondent also notes that numerous third parties have used the term “Del Monte” in connection with various commercial activities. Respondent explains that poor economic conditions have delayed the launch of his business. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 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.
In order to prevail under the Policy, Complainant must satisfy all three of the foregoing elements; failure to establish one element dooms the Complaint to failure. In this case, the Panel concludes that Complainant has failed to establish the third element, i.e. bad faith registration and use. Accordingly, the Panel need not address the first two elements under the Policy.
With respect to bad faith registration and use, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with 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 website or location.
The Panel finds that Complainant has not proven that Respondent more likely than not registered the Domain Names in bad faith. In this vein, the Panel emphasizes that the Policy is designed to address clear cases of cybersquatting, and the concept of bad faith under the Policy is not coextensive with concepts of trademark infringement under the U.S. Lanham Act or otherwise.
On this record, which is considerably less developed than one would expect in a judicial proceeding, the Panel concludes that Respondent has offered a somewhat plausible explanation for his conduct, including the fact that he sells real estate in an area that includes the Del Monte Forest and has been working on a business plan (see above reference to Respondent’s annexed business preparation documents) to start a grocery business specializing in products from the Del Monte region which will offer a delivery service called Del Monte Express. Further, the Panel observes that Respondent, despite a multi-year delay in actually launching a business using the Domain Names, has taken a number of steps (incorporating a company called Del Monte Farms, Inc., filing a trademark application for the word mark DEL MONTE FARMS, etc.) which a run-of-the-mill cybersquatter is highly unlikely to have taken. Finally, the Panel notes that Respondent operates a legitimate real estate business, has since June 2007 owned Reg. No. 3,256,110 (issued by the U.S. Patent and Trademark Office) for the DEL MONTE REALTY service mark, and has owned the domain name “www.” for eight years, all of which further enhance the impression that Respondent is not a typical cybersquatter. On a balance of probabilities, therefore, the Panel concludes that, while a trademark infringement suit under the Lanham Act might yield a different outcome, there is enough doubt in this limited record to reject, in view of the Policy’s limited scope, the Complaint for failure to establish bad faith registration and use.
Accordingly, the Complaint fails and the Panel need not address the other elements required for a transfer under the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Presiding Panelist
Michelle Brownlee
Panelist
Gregory N. Albright
Panelist
Date: February 11, 2015
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