DECISION

Hormel Food Corporation and Hormel Foods LLC v. A. Keaveny

Claim Number: FA0205000114412

PARTIES

Complainants are Hormel Foods Corporation and Hormel Foods, LLC, Austin, MN, USA (hereinafter collectively, “Complainant”) represented by Linda M. Byrne, of Merchant & Gould P.C.  Respondent is A. Keaveny, Leeds, West Yorks, UNITED KINGDOM (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <spamoftheday.com>, registered with Register.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 23, 2002; the Forum received a hard copy of the Complaint on May 24, 2002.

On May 28, 2002, Register.com confirmed by e-mail to the Forum that the domain name <spamoftheday.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 17, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@spamoftheday.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Respondent’s <spamoftheday.com> domain name is confusingly similar to Complainant’s registered SPAM family of marks.

2. Respondent has no rights or legitimate interests in the <spamoftheday.com> domain name.

3. Respondent registered and used <spamoftheday.com> in bad faith.

B. Respondent did not submit a Response.

FINDINGS

Complainant owns numerous trademark registrations for its SPAM mark, including: U.S. Trademark Reg. No. 529,294 for SPAM registered August 22, 1950 and United Kingdom Trademark Reg. No. 602,660 for SPAM registered on November 25, 1938, among others. Complainant also maintains two websites dedicated exclusively to its SPAM product, namely, <spam.com> and <spam-uk.com>.

Complainant is a multinational manufacturer of meat and food products and has been in operation since 1891. Complainant has been using the SPAM mark in connection with its business since at least 1937. In 1999 alone, Complainant’s sales and advertising in the United Kingdom totaled $475,000; in 2000 $568,400; and in 2001 $505,000.

Complainant’s SPAM mark is a distinctive, internationally recognized trademark. Complainant has sold over five billion cans of luncheon meat under the SPAM mark and invested millions of dollars in advertising. As a result, Complainant has a 75% share of the canned meat market and Complainant’s SPAM product is eaten in 30% of all American homes.

Respondent registered the disputed domain name on May 20, 2000. Complainant’s investigation revealed that Respondent previously used the disputed domain name to redirect Internet users to pornographic websites located at <porn.co.uk> and <phonesex.co.uk>.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(2) 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.

Identical to and/or Confusingly Similar

Complainant established its rights in the SPAM mark through worldwide registration and continuous use of the mark since 1937.

Respondent’s disputed domain name incorporates Complainant’s entire SPAM mark. The addition of various generic terms in the second level domain does not detract from the dominating presence of Complainant’s SPAM mark. Internet users will likely believe an affiliation exists between Respondent’s website and Complainant’s product. See Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to Complainant’s family of marks); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent failed to submit a Response in this proceeding. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s primary purpose in registering and using the domain name is to tarnish Complainant’s mark and to misleadingly divert web traffic intended for Complainant’s website to Respondent’s pornographic website. Respondent is commercially benefiting from the goodwill associated with Complainant’s established mark. Respondent is not making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii) and Respondent’s domain name is not connected to a bona fide offering of goods or services under Policy ¶ 4(c)(i). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

No evidence suggests that Respondent is commonly known by the <spamoftheday.com> domain name, or a corresponding “SPAMOFTHEDAY” moniker. The fame and recognition associated with Complainant’s established SPAM mark creates a presumption that Respondent has no rights or legitimate interests in the SPAM mark pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant has been continually using its SPAM mark to identify its unique luncheon product since 1937 and Complainant holds as many as 101 trademark registrations for its SPAM family of marks. Therefore, because of  Complainant’s extensive development of its mark, the SPAM mark has become distinct and famous. Due to the mark’s fame and Complainant’s registration of the SPAM mark in the United Kingdom, Respondent’s domicile, Respondent had notice of Complainant’s rights when registering the disputed domain name. Respondent’s registration and use of the disputed domain name, despite knowledge of Complainant’s preexisting rights, evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent’s registration of an infringing domain name with the intention of directing Internet users to pornographic websites constitutes bad faith pursuant to Policy ¶ 4(b)(iv). Respondent is attempting to attract, for commercial gain, Internet users who are searching for Complainant’s products to its own pornographic websites by creating confusion as to the source of the domain name. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <spamoftheday.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: July 25, 2002.

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