The Complainant is Sara Lee Foods, LLC of Chicago, Illinois, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Domain Hostmaster, Protopixel Pty Ltd of Queensland, Australia. 2. The Domain name and Registrar
The disputed domain name is registered with F Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2016.
The Center appointed Dietrich Beier as the sole panelist in this matter on March 2, 2016. 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
The Complainant is a subsidiary of Tyson Foods, Inc., one of the largest food production companies in the United States of America and throughout the world. The Complainant is the owner of the BALL PARK mark and, through its predecessors-in-interest, began selling BALL PARK brand hot dogs more than 50 years ago. BALL PARK is now a national premium brand of hot dogs and BALL PARK franks, beef patties, angus brats, and beef hot links can be found in supermarkets and convenience stores throughout the United States of America.
The Complainant owns multiple federal trademark registrations for the BALL PARK trademark with the United States Patent and Trademark Office (“USPTO”) including for use in connection with frankfurters (Registration. No. 1,807,761, applied for on March 11, 1993 and registered on November 30, 1993).
The disputed domain name was registered on October 25, 2002. It is used for a website featuring links to third-party websites that are in part competitive to the business of Complainant. 5. Parties’ Contentions A. Complainant
The Complainant owns multiple federal trademark registrations for the BALL PARK mark with the United States Patent and Trademark Office (“USPTO”) including for use in connection with frankfurters (Registration No. 1,807,761, registered on November 30, 1993). The Complainant and its predecessors-in-interest have used the BALL PARK trademark since at least as early as 1961 and the Complainant has achieved significant goodwill in its BALL PARK mark.
The disputed domain name incorporates the Complainant’s BALL PARK mark in full, changing the BALL PARK mark only by adding the descriptive terms “hot dogs” and the generic Top-Level Domain (“gTLD”) “.com.”
In light of the foregoing, pursuant to paragraph 4(a)(i) of the Policy, the disputed domain name is confusingly similar to the Complainant’s BALL PARK mark.
The disputed domain name was registered without the Complainant’s authorization or consent. The Respondent is not commonly known by the disputed domain name, has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. Instead, the Complainant has used the disputed domain name to redirect consumers to a website featuring links to third-party websites that are in part competitive to the business of the Complainant. In light of the foregoing, the Respondent clearly lacks rights and legitimate interests in the disputed domain name.
The Respondent acquired and has commercially used the disputed domain name to capitalize on Internet users’ efforts to find the Complainant’s website and seek information about the Complainant and its products. The Respondent has used the disputed domain name to redirect these consumers to a gateway website that contains links to other goods and services. Panels routinely presume that when Internet users are diverted in this manner, the respondent receives income in the form of “pay-per-click” fees. As such, the Respondent has clearly used the disputed domain name to attract the Complainant’s customers for the Respondent’s own commercial gain.
Moreover, the Respondent is offering to sell the disputed domain name for $999 on the website under the disputed domain name.
The Respondent’s efforts to misappropriate the Complainant’s famous BALL PARK mark, capitalize on consumer confusion, and divert unsuspecting Internet users to third-party websites unrelated to the Complainant undoubtedly constitutes bad-faith registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights in BALL PARK.
The disputed domain name is confusingly similar to the BALL PARK mark of the Complainant, since the addition of “hot dogs” in the disputed domain name is of a purely descriptive nature and does not change the overall impression being created by the dominating element “ball park” being used identically.
The Panel therefore considers the disputed domain name to be confusingly similar to the BALL PARK mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, there is no indication that the Respondent is commonly known by the name “ball park” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the nature of the BALL PARK mark as known, not at last due to the long time the mark is present on the United States of America market, the Respondent must have been aware of the Complainant and its trademark when registering the disputed domain name. The Complainant has not authorized the Respondent to make use of its mark.
The circumstances of this case, in particular the offer to sell the disputed domain name on the website under the disputed domain name as well as the advertising links to competitors in the field of the Complainant indicate that the Respondent registered and uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Dietrich Beier
Sole Panelist
Date: March 15, 2016
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