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Hormel Foods Corporation and Hormel Foods v. Spotted Cow Media [2000] GENDND 792 (31 July 2000)

National Arbitration Forum

DECISION

Hormel Foods Corporation and Hormel Foods, LLC v. Spotted Cow Media

Claim Number: FA0006000095067

PARTIES

The Complainant is Hormel Foods Corporation and Hormel Foods, LLC, Austin, MN, USA ("Complainant"). The Respondent is Spotted Cow Media, Las Vegas, NV, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "KIDSKITCHEN.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Judge Richard B. Wickersham, (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to National Arbitration Forum ("The Forum") electronically on 06/26/2000; The Forum received a hard copy of the Complaint on 06/26/2000.

On 07/06/2000, NSI confirmed by email to The Forum that the domain name "KIDSKITCHEN.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On 06/29/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/17/2000 by which Respondent could file a response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email.

On July 21, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES' CONTENTIONS

A. Complainant

The grounds upon which the Complaint is made are:

1. The domain name, kidskitchen.com, registered by Respondent, is identical to the trademark KID'S KITCHEN owned by Complainant (hereinafter the "Mark"). Complainant has used its Mark in commerce and owned registrations for its Mark since 1987. Complainant's Mark is registered on the Principal Register of the United States Patent and Trademark Office, subject to U.S. Reg. No.'s 1,598,823 for shelf-stable microwaveable entrees, consisting primarily of pasta or noodles; 1,603,922 for shelf-stable entrees consisting primarily of chicken, beef or cheese; 1,603,923 for shelf-stable entrees consisting primarily of vegetables; and 2,186,013 for sandwiches consisting of meat and/or cheese with a bun; and corn dogs. Complainant's Mark is also used as a common law service mark for a children's reading club program. Complainant clearly has established rights in its Mark by using it continuously and extensively as a trademark and service mark;

2. Respondent's use of the identical domain name is confusing not only because it is identical but also because the content of its website uses colors, typestyles, and a children's cooking theme virtually identical to that used by Complainant, and also uses Complainant's identical Mark as a service mark.

B. Respondent

For a Response to the Complainant, Respondent states:

1. Respondent, Spotted Cow Media (SCM), avers that it is a small company owned by two brothers, hereafter referred to as Respondents'. On or around June 1, 1966 SCM was formed to provide web design services and develop content websites. The mother of the principals of SCM is a High School Home Economics instructor of 25-years and indicated an interest in contributing to an SCM website. In addition to teaching, Respondents' mother teaches children's cooking classes at a local cooking school, and holds children's cooking parties for birthdays and other special events. Respondents' mother often refers to her classroom affectionately as her "Kids' Kitchen." Therefore, when a website was developed for Respondents' mother to participate in, the creation of kidskitchen.com was the obvious choice;

2. Respondent further alleges that on August 9, 1996, SCM queried the "whois" database at Network Solutions and found the domain name kidskitchen.com to be available. In addition, a search on common search engines for the name "Kids Kitchen" revealed nothing that would indicate any infringement. Therefore, the domain name kidskitchen.com was registered on this day to SCM;

3. Further, the intent of SCM was to allow Respondents' mother to develop content of website, while SCM provided web design, hosting and other ancillary services. Content of site was to be based on a book that Respondents' mother was writing (now completed yet unpublished) and her copious notes from her cooking classes and birthday parties;

4. Respondent further contends that SCM was not aware of HFC's trademark until mid-December 1999, when a registered letter arrived from Melanie J. Cicchese, counsel for HFC, informing SCM of HFC's trademark;

5. Further, in an attempt to amicably settle this matter, SCM retained legal counsel to contact Ms. Cicchese. Ms. Cicchese indicated that a disclaimer on the site would most likely settle the matter. Therefore, acting in good faith, a disclaimer was added to the site, which reads, "KidsKitchen.com is in no way affiliated with Hormel Foods Corporation."

FINDINGS

I. The Complainant is Hormel Foods Corporation and Hormel Foods, LLC, of Austin, MN. The Respondent is Spotted Cow Media, Las Vegas, NV and the domain name at issue is KIDSKITCHEN.COM, which name is registered with Network Solutions, Inc. The Respondent is the current registrant of the name.

II. The domain name, kidskitchen.com, registered by Respondent is identical to the trademark KIDS'KITCHEN, owned by Complainant which Mark has been used in commerce by Complainant since 1987. Complainant's Mark is registered on the principal register of the United States Patent and Trademark Office. Complainant’s Mark is also used as a common law service mark for a children's reading club program. Complainant has established rights in its Mark by using it continuously and extensively as a trademark and service mark.

III. Respondents use of the identical domain name is confusing not only because it is identical but also because the content of its website uses colors, typestyles, and a children's cooking theme which are virtually identical to that used by Complainant and also uses Complainant's identical Mark as a service mark.

IV. As stated, Network Solutions is the Registrar of the kidskitchen.com domain name registration and the Registrant is Spotted Cow Media, created August 09, 1996. The domain registration kidskitchen.com is in active status.

V. KIDS'KITCHEN is a trademark used as product name. It is registered on the Principal Register since 1987 at U.S. Registration No. 1,598,823 for self-stable microwaveable entrees, consisting primarily of pasta or noodles; No. 1,603,922 for self-stable entrees consisting primarily of chicken, beef or cheese; and No. 1,603,923 for shelf-stable entrees consisting primarily of vegetables and No. 2,186,013 for sandwiches consisting of meat and/or cheese with a bun; and corn dogs, et al.

DISCUSSION:

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the Complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical of confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name;

and

(3) the domain name has been registered and is being used in bad faith.

I find that Respondent's use of the identical domain name is confusing not only because it is identical but also because the content of its website uses colors, typestyles, and a children's cooking theme virtually identical of that used by Complainant, and also uses Complainant's identical Mark as a service mark.

Rights or Legitimate Interests

I find that Respondent has no rights or legitimate interests in the domain name at issue. Respondent owns no federal or state trademark registrations identical or similar to Complainant's Mark. Respondent's company is named Spotted Cow Media, not Kids' Kitchen or any derivative thereof. Thus, Respondent is not commonly known by the domain name.

I find that Respondent is using this domain name for commercial gain. The website contains a solicitation for sponsors to invest in the website and/or to purchase banner advertisements. Such solicitation is evidence that Respondent is making a commercial use of this domain name.

I find further that Respondent uses colors and typestyles virtually identical to Complainant's Mark, which, coupled with the use of an identical domain name, misleadingly diverts consumers to Respondent's site.

Finally, I find that Respondent's registration and use of this domain name is in bad faith. By registering and using the domain name, Respondents intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation or endorsement of its site and service.

DECISION

I find in favor of the Complainant, Hormel Foods Corporation and Hormel Foods, LLC, and against the Respondent, Spotted Cow Media, and hereby ORDER and DIRECT that the domain name KIDSKITCHEN.COM, be and is hereby transferred from the Respondent to the Complainant.

__________________________________________

Judge Richard B. Wickersham, (Ret.)

July 31, 2000

Date

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