The Complainant is The Kraft Heinz Foods Company of Chicago, Illinois, United States of America ("United States"), represented internally.
The Respondent is Kraft Heinz of Chicago, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with NetEarth One, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 24, 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, a wholly-owned, publicly traded subsidiary of The Kraft Heinz Company, is the fifth-largest food and beverage company in the world. The Complainant's iconic brands include, among others, Kraft, Heinz, Jell-O, Kool-Aid, Maxwell House, Ore-Ida, Oscar Mayer, Weight Watchers Smart Ones and Velveeta. The Complainant's parent company was formed by the merger of The Kraft Foods Group and H.J. Heinz Holding Corporation on July 2, 2015.
The Complainant, through its affiliated companies, owns trademark registrations in the United States and around the world for both KRAFT and HEINZ (collectively, the "KRAFT HEINZ Mark"), including United States Registration No. 554187 for KRAFT, registered on January 29, 1952, and United States Registration No. 31048 for HEINZ, registered on December 28, 1897. In addition, the Complainant is the owner of the domain name , which it registered on March 24, 2015, and which resolves to "www.", the Complainant's official website through which it advertises and promotes its numerous products and services.
The Respondent registered the Disputed Domain Name on September 12, 2016. The Disputed Domain Name consists of a combination of the KRAFT and HEINZ registered trademarks. The Disputed Domain Name does not resolve to an active website. The Respondent used the Disputed Domain Name to send fraudulent emails to the Complainant's potential customers without the knowledge or authority of the Complainant. The emails made offers to customers to sell food products and other goods, and then demanded payment for those purchases. The emails included fake contracts and invoices featuring the Complainant's logo and company seal and the Respondent sent the emails under the name of the Complainant's Chief Operating Officer, to deceive such recipients into believing that they were dealing with the Complainant. The Respondent registered the Disputed Domain Name under the name "Kraft Heinz" and used the Complainant's street address to deceive customers into believing that the Disputed Domain Name belonged to the Complainant. 5. Parties' Contentions A. Complainant
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(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 in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the KRAFT HEINZ Mark based on both longstanding use and its numerous trademark registrations for the KRAFT HEINZ Mark in the United States and in countries worldwide. Several UDRP panels have concluded that the combination of two registered trademarks as a domain name constitutes confusing similarity under the Policy, especially when there is a merger between the companies that own the respective trademarks. See Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao"),WIPO Case No. D2000-0717;
The Disputed Domain Name consists of the KRAFT HEINZ Mark followed by the descriptive word "company" connected by a hyphen, and followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434. This is especially true where, as in the present case, the descriptive or generic word "company" is part of the Complainant's trade name. See Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604.
Further, although the Disputed Domain Name contains a hyphen between "kraftheinz" and "company", this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as a hyphen cannot on its own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656(citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214) (hyphens do not "serve to dispel Internet user confusion here"); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY").
Finally, the addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's KRAFT HEINZ Mark since upon accessing the Disputed Domain Name, individuals would likely believe that the Disputed Domain Name was related to or associated with the merger that created the Complainant's parent company as described above.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in that domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its KRAFT HEINZ Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant's potential customers into believing that they are being contacted by the Complainant. In this phishing scheme, the Respondent sent emails to the Complainant's potential customers under the name of the Complainant's Chief Operating Officer to fraudulently induce them to purchase certain goods. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith,WIPO Case No. D2015-1774.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent's phishing scheme to send potential customers of the Complainant fraudulent offers via email to purchase food products and other goods purporting to come from the Complainant, and to demand payment for such purchases, evidences a clear intent to disrupt the Complainant's business, deceive individuals, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's KRAFT HEINZ Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent's bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant's trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Several UDRP panels have found that email-based phishing schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, supra.
Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant's KRAFT HEINZ Mark for commercial gain.
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used KRAFT HEINZ Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name after the Complainant first used and obtained its numerous trademark registrations for the KRAFT HEINZ Mark and after the discussion and successful completion of the merger between the companies that created the Complainant's parent company. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its KRAFT HEINZ Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name). Several UDRP decisions have found bad faith registration and use where a disputed domain name confusingly similar to the marks of the components of a merging entity had been registered around the time of a merger announcement. See, e.g., Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: November 29, 2016
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