START-UP TRADEMARK OPPOSITION POLICY

DECISION

The Pillsbury Company v. Prebaked Scandinavia ab

Claim Number: FA0112000102970

PARTIES

The Complainant is The Pillsbury Company, Golden Valley, MN, USA (“Complainant”).  The Respondent is Prebaked Scandinavia ab, Tyreso, SWEDEN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bakeoff.biz>, registered with Network Solutions.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on .

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

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 January 25, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <bakeoff.biz> domain name is identical to Complainant's BAKE-OFF mark.

Respondent has no rights or legitimate interests in the <bakeoff.biz> domain name.

Respondent registered the <bakeoff.biz> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the BAKE-OFF mark in commerce since 1950 in relation to cooking contests for adults and children, and cookbooks.  Complainant is the owner of six trademarks in the United States incorporating the BAKE-OFF mark.  Complainant has used the BAKE-OFF mark for over fifty years and has accumulated a large amount of good will in relation to it.

Respondent registered the disputed domain name on November 19, 2001.  Respondent is known as Prebaked Scandinavia.  Complainant's investigation has not found any trademark or service marks owned by Respondent for BAKE-OFF.  Respondent is a competitor of Complainant because both sell baked goods.

DISCUSSION

Paragraph 15(a) of the STOP 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

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

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

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

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

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the BAKE-OFF mark because it has used the BAKE-OFF mark in commerce for over fifty years in relation to cooking contests and cookbooks.  Furthermore, Complainant is the owner of six trademarks in the United States that incorporate the BAKE-OFF mark. 

The <bakeoff.biz> domain name is identical to Complainant's BAKE-OFF mark because the deleted hyphen is insignificant in determining whether or not a domain name is identical.  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has not demonstrated rights or legitimate interests in 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, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  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”).

Complainant has established that it has rights in the disputed domain name because it has used the BAKE-OFF mark in commerce for over fifty years and established  longstanding goodwill.  Furthermore, it is the owner of six trademarks in the United States.  Respondent has not come forward to offer evidence that it has any rights in the mark BAKE-OFF, or that it owns any trademarks or service marks incorporating the word anywhere in the world.  Therefore Respondent has not demonstrated any rights or legitimate interests in the <bakeoff.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

Based on the longstanding use of Complainant's BAKE-OFF mark, any planned use by Respondent of the <bakeoff.biz> domain name, identical to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's mark and therefore, is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Complainant has provided evidence that Respondent is commonly known as Prebaked Scandinavia.  There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <bakeoff.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii).  Therefore it has not demonstrated rights or legitimate interests in the disputed domain name.  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has 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).

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

Registration or Use in Bad Faith

It can be inferred, because Respondent is a baked goods company that competes with Complainant, that Respondent registered the disputed domain name in order to disrupt Complainant's business.  This type of behavior is evidence of bad faith according to STOP Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Because of the famous and distinctive nature of Complainant's BAKE-OFF mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <bakeoff.biz> domain name.  Registration of a domain name incorporating another's mark with actual knowledge that the domain name is infringing is evidence of bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

Furthermore, the <bakeoff.biz> domain name is identical to Complainant's BAKE-OFF mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <bakeoff.biz> domain name, despite it being identical, is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

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

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <bakeoff.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist.

Dated: January 31, 2002

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