DECISION

Kellogg Company and Kellogg North America Company v. Henry Chan

Claim Number:  FA0405000275233

PARTIES

Complainants are Kellogg Company and Kellogg North America Company (collectively, “Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C., 11730 Plaza America Drive - Suite 600, Reston, VA 20190.  Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 21, 2004; the Forum received a hard copy of the Complaint on May 24, 2004.

On May 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 16, 2004 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@applejacke.com, postmaster@applejacs.com, postmaster@applejak.com, postmaster@applejakcs.com, postmaster@applejask.com, postmaster@applejaxes.com, postmaster@applejaxs.com, postmaster@applesjack.com, postmaster@applesjacks.com, postmaster@fruityloop3.com, postmaster@kelloggscornpop.com, postmaster@kellogsapplejacks.com, postmaster@kellogsenespanol.com, postmaster@kellogsfruitloops.com, and postmaster@tucannsam.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 June 24, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com> domain names are confusingly similar to Complainant’s APPLE JACKS, CORN POPS, FROOT LOOPS, TOUCAN SAM, and KELLOGGS marks.

2. Respondent does not have any rights or legitimate interests in the <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com> domain names.

3. Respondent registered and used the <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant Kellogg Company began its business in 1906 and was incorporated in 1922. Complainant is regarded as one of the most famous manufacturers, distributors, and advertisers for cereal products in the United States.  In connection with its business activities, Complainant uses a variety of trademarks that have been registered with the United States Patent and Trademark Office (“USPTO”).  In 2003, Kellogg Company formally assigned its United States trademarks to a wholly-owned subsidiary, Complainant Kellogg North America Company. 

Among Complainant’s U.S. trademarks are the following: APPLE JACKS (Reg. No. 817,917, issued Nov. 1, 1966 in connection with “cereal breakfast foods”), CORN POPS (Reg. No. 1,580,348, issued Jan. 30, 1990 in connection with “processed cereal-derived food product to be used as a breakfast food, snack food and ingredient for making food”), FROOT LOOPS (Reg. No. 786,518, issued Mar. 9, 1965 in connection with “cereal breakfast foods”), KELLOGGS (Reg. No. 1,278,006, issued May 15, 1984 in connection with “Publications and Printed Matter – Namely, Booklets, Pamphlets, Leaflets and Brochures Concerning the Company and Its Products”), and TOUCAN SAM (Reg. No. 1,343,023, issued June 18, 1985 in connection with “cereal-derived food product to be used as a breakfast food snack food or ingredient for making food”).

On February 11, 2004, Respondent registered the disputed domain names <applejacs.com>, <applejaxs.com>, <applesjacks.com>, and <kellogsenespanol.com>.

On February 25, 2004, Respondent registered the disputed domain name <applejak.com>.

On March 11, 2004, Respondent registered the disputed domain names <applejacke.com>, <applejakcs.com>, <applejaxes.com>, <applesjack.com>, <kelloggscornpop.com>, <kellogsfruitloops.com>, and <tucannsam.com>.

On March 15, 2004, Respondent registered the disputed domain name <kellogsapplejacks.com>.

On April 12, 2004, Respondent registered the disputed domain name <fruityloop3.com>.

On May 10, 2004, Respondent registered the disputed domain name <applejask.com>.

Each of the aforementioned disputed domain names resolves to generic search engine websites that exhibit the respective domain names as the title to their attached web pages. 

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 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

The registration of a mark with an appropriate governmental authority is sufficient to confer rights in a mark under the Policy.  Therefore, Complainant has established rights in the APPLE JACKS, CORN POPS, FROOT LOOPS, KELLOGGS, and TOUCAN SAM marks as the result of its trademark registrations with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark.)

Domain names that contain minor typographical misspellings of a third-party’s mark, also called “typosquatting,” have been found to be confusingly similar to the mark under Policy ¶ 4(a)(i).  Likewise, domain names that are phonetically identical to the third-party mark have been found to be confusingly similar to the mark.  The disputed domain names <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, and <tucannsam.com> are confusingly similar to Complainant’s APPLE JACKS and TUCAN SAM marks because each contains minor misspellings of the marks and in some cases are phonetically identical to the marks.  See Guinness UDV North Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding that the removal of the final letter "f" from Complainant's SMIRNOFF mark, referred to as "typo-piracy," failed to remove the confusing similarity that such a misspelling gives rise to); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that Respondent's <marrriott.com> domain name was confusingly similar to Complainant's MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the domain name confusingly similar to Complainant's mark"); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) ("Respondent's <neimanmacus.com> domain name represents a simple misspelling of Complainant's NEIMAN MARCUS mark. Respondent's domain name is a classic example of typosquatting, the process of registering a common misspelled version of a famous mark in a domain name. It has been consistently held that typosquatting renders the domain name confusingly similar to the altered famous mark."); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Pfizer Inc. v. Phizer's Antiques & Phizer, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).

Furthermore, domain names that contain a combination of a third party’s trademarks have been found to be confusingly similar to the marks.  As already stated, the fact that a respondent registered a minor misspelling of one of the marks is inconsequential under the Policy.  Therefore, the disputed domain names <kelloggscornpop.com>, <kellogsapplejacks.com>, and <kellogsfruitloops.com> are confusingly similar to Complainant’s marks under the Policy because the domain names have combined Complainant’s KELLOGGS mark (or the misspelling thereof) with Complainant’s CORN POPS (a misspelling thereof), APPLE JACKS, and FRUIT LOOPS marks.  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

The domain name <fruityloop3.com> is confusingly similar to Complainant’s FRUIT LOOPS mark because the name is merely a minor misspelling of Complainant’s mark and has simply added the number “3.”  See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

The domain name <kellogsenespanol.com> contains a minor misspelling of Complainant’s KELLOGGS mark combined with the generic Spanish terms “en espanol,” which translates into “in Spanish.”  Domain names that contain a third-party mark with the addition of generic terms have consistently been found to be confusingly similar to the mark under the Policy.  Therefore, the domain name <kellogsenespanol.com> is confusingly similar to Complainant’s KELLOGGS mark under the Policy.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Therefore, each of the disputed domain names is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s failure to respond to the Complaint may act as an implicit admission that Respondent lacks rights to and legitimate interests in the disputed domain names.  Moreover, the Panel may accept Complainant’s assertions and all reasonable inferences in the Complaint as true.  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); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence).

Nothing in the record indicates that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  The only evidence that bears on whether Respondent is commonly known by any of the domain names is the WHOIS registration information for the respective domain name registrations.  The WHOIS information lists the registrant of the domain names as “Henry Chan,” not any of the second-level domains.  Therefore, the Panel concludes that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent has registered domain names that are confusingly similar to Complainant’s marks in order to host websites at the domain names that provide search engine services.  Although offering search engine services may be a legitimate use of domain names, the fact that Respondent is offering those services under confusingly similar variations of Complainant’s marks evidences Respondent’s intent to siphon Internet users away from their intended destinations (namely Complainant) to Respondent’s unrelated websites.  Therefore, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Bank of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

It is commonly known that search engine websites generate revenue as the result of Internet traffic.  In the instant case, Respondent is using the disputed domain names to host search engine websites.  The fact that Respondent registered fifteen domain names that are confusingly similar to Complainant’s marks suggests that Respondent was attempting to attract, presumably for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s marks.  Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent used the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <applejacke.com>, <applejacs.com>, <applejak.com>, <applejakcs.com>, <applejask.com>, <applejaxes.com>, <applejaxs.com>, <applesjack.com>, <applesjacks.com>, <fruityloop3.com>, <kelloggscornpop.com>, <kellogsapplejacks.com>, <kellogsenespanol.com>, <kellogsfruitloops.com>, and <tucannsam.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  July 9, 2004

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