Complainant is The Kraft Heinz Foods Company of Chicago, Illinois, United States of America (“United States”), represented by in-house counsel, United States.
Respondent is Bernard Hees of Chicago, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2017. On March 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 7, 2017, providing the registrant and contact information disclosed by the Registrar. Complainant filed an amended Complaint on April 11, 2017.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 10, 2017. 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 is the beneficial owner of registrations for the trademarks KRAFT and HEINZ on the Principal Register of the United States Patent and Trademark Office (“USPTO”). Representative registrations for the KRAFT trademark include: registration number 554,187, registration dated January 29, 1952, in international classes (“ICs”) 29 and 30, covering, inter alia, various cheese products, and; registration number 2,217,573, registration dated January 12, 1999, in IC 30, covering, inter alia, stuffing mix and pasta. Representative registrations for the HEINZ trademark include registration number 62,182, registration dated April 23, 1907, in IC 29, covering, inter alia, pickles and ketchup, and; registration number 1,935,618, registration dated November 14, 1995, in IC 25, covering, inter alia, shirts and caps. Complainant has provided evidence of a substantial number of additional trademark registrations for KRAFT and HEINZ on the Principal Register of the USPTO.
Complainant is a major multinational food and beverage company that is owner of a substantial number of food brands, several of which are well-known in the United States.1
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the record of registration for the disputed domain name in the name of Respondent is February 18, 2017.
Complainant has provided evidence that the name used in the record of registration by Respondent is fictitious, and is a misspelled reference to the Chief Executive Officer (“CEO”) of Complainant. The given name of Complainant’s CEO is “Bernardo”, while the name used in the record of registration is “Bernard”. Respondent used the actual street address for Complainant’s headquarters in Chicago, Illinois, United States, but referred to “Chicago, Alabama” as the city and state, while using the accurate ZIP code. In the United States the same city name frequently is used in different states. However, the headquarters building of Complainant is located in State of Illinois, not in Alabama. The record of registration for the disputed domain name includes a “” email address incorporating the KRAFT and HEINZ trademarks.
Respondent used the actual name of Complainant’s Chief Operating Officer in an email address incorporating the disputed domain name (i.e., “@”) to propose business transactions involving the sale of scrap metal and related products to prospective purchasers in various countries, indicating that the seller was Complainant. Email correspondence furnished by Complainant indicates that several recipients of such email solicitations were confused as to the actual source of the correspondence, and that at least two recipients transmitted substantial initial payments to Respondent for shipments of metal products before alerting Complainant of concern that the transactions might be fraudulent (i.e., not originating with Complainant).
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the trademarks KRAFT and HEINZ, and that the disputed domain name is confusingly similar to a combination of those trademarks.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services; (2) Respondent is engaged in identity theft with respect to Complainant’s Chief Operating Officer by using his name to transmit deceptive emails, and; (3) Respondent has not been commonly known by the disputed domain name and has not acquired any trademark rights related to the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademarks are widely known and registered worldwide; (2) Respondent was aware of Complainant’s trademark rights when registering the disputed domain name; (3) there is “no conceivable legitimate reason for Respondent to register the Disputed Domain Name”; (4) Respondent is engaged in a phishing expedition intending to defraud unsuspecting Internet users by creating a likelihood of confusion with Complainant’s trademarks and using the identity of Complainant’s executive officers, and referring to Complainant’s actual website.
Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The evidence provided by Complainant in this proceeding establishes that Respondent has used the well-known trademarks of Complainant to fraudulently assume the identity of Complainant, and attempted to defraud Internet users (with some apparent success). In the absence of a reply by Respondent, the Panel considers it appropriate to proceed to a summary decision. A. Identical or Confusingly Similar
Complainant has established that it owns rights in the trademarks KRAFT and HEINZ based on registration on the Principal Register of the USPTO and through use in commerce in the United States.
The disputed domain name combines the two aforementioned well-known trademarks of Complainant, adding a hyphen and the geographic indicator “usa”. The geographic indicator which refers to the principal headquarters location of Complainant does not distinguish the disputed domain name from Complainant’s trademarks from the standpoint of the Policy.
The Panel determines that Complainant owns rights in the trademarks KRAFT and HEINZ, and that the disputed domain name is confusingly similar to those trademarks. B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has provided substantial evidence that Respondent has used the disputed domain name for purposes of identity theft and attempting to defraud Internet users. Such evidence is unrebutted.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy. C. Registered and Used in Bad Faith
Complainant has provided substantial evidence that Respondent has used the disputed domain name for purposes of identity theft and attempting to defraud Internet users. Such evidence is unrebutted.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications intending to defraud Internet users. Respondent was manifestly aware of Complainant’s rights in its trademarks when it undertook this action.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 Complainant.
Frederick M. Abbott
Sole Panelist
Date: May 24, 2017
1 The Panel takes administrative notice of the well-known character of several of Complainant’s brands in the United States, including KRAFT, HEINZ and others, such as "Jell-O".
Full & Egal Universal Law Academy