DECISION

Hormel Foods Corporation and Hormel Foods LLC v. Global Media Resources SA

Claim Number: FA0205000114411

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 Global Media Resources SA, Toronto, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <spamhammer.com>, registered with Tucows, Inc.

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 28, 2002.

On May 24, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <spamhammer.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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@spamhammer.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 <spamhammer.com> domain name is confusingly similar to Complainant’s registered SPAM family of marks.

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

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

B. Respondent did not submit a Response.

FINDINGS

Complainant is a multinational manufacturer and marketer 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. Complainant also has a website devoted exclusively to SPAM located at <spam.com>.

Complainant is the owner of numerous U.S. Patent and Trademark Office registrations, including: Reg No. 529,294 for the SPAM mark first used in May of 1937; Reg. No. 2,059,462 for the SPAMARAMA mark first used in April of 1978; and, Reg. No. 2,478,066 for the SPAMTASTIC mark first used in October of 1997. Complainant also holds a Canadian trademark registration, more specifically, Reg. No. UCA46116, registered on March 9, 1998. Complainant owns as many as 101 registrations for the SPAM mark worldwide.

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

Respondent registered the disputed domain name on January 18, 1999. Respondent has used the domain name in connection with a pornographic website located at <hardcontact.com>. Respondent’s website uses the mousetrapping technique whereby Internet users are continually confronted with newly emerging pornographic websites despite closing the website browser window.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will 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 and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the SPAM family of marks through worldwide registration and by Complainant’s continuous use of the mark since 1937.

The domain name registered by Respondent, <spamhammer.com>, is confusingly similar to Complainant’s SPAM family of marks. Respondent’s infringing domain name incorporates Complainant’s entire mark. The secondary domain name deviates from Complainant’s SPAM mark only by addition of the generic word “hammer.” The addition of a generic word fails to detract from the overall impression of the domain name and presence of Complainant’s SPAM mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights to or Legitimate Interests

Complainant has established its rights to and legitimate interests in the SPAM mark in this proceeding.  Respondent has not submitted a Response in this matter. 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 Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent benefits commercially from the goodwill associated with Complainant’s SPAM family of marks by diverting Internet users who are seeking Complainant’s goods and services to pornographic websites that tarnish Complainant’s reputation.  Respondent’s actions do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See 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); see also 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 the Complainant’s mark).

No evidence suggests that Respondent is commonly known as “SPAMHAMMER” or <spamhammer.com> pursuant to Policy ¶ 4(c)(ii). In fact, the fame associated with Complainant’s SPAM family of marks creates a presumption that Respondent is not known by the SPAM moniker. 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 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).

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

Registration and Use in Bad Faith

Complainant holds as many as 101 registrations for the SPAM mark worldwide, including Respondent’s domicile, Canada. Furthermore, Complainant’s SPAM family of marks has been extensively used since 1937 and enjoys international recognition. Because of the fame associated with Complainant’s SPAM marks, 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 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); 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).

Respondent’s registration of a confusingly similar domain name, which incorporates Complainant’s famous mark with the intention of rerouting Internet users to a pornographic website 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 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); 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 <spamhammer.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 24, 2002.

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