DECISION

Kellogg Company and Kellogg North America Company v. Henry Chan

Claim Number:  FA0402000237507

PARTIES

Complainants are Kellogg Company and Kellogg North America Company (hereinafter “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 <applejaks.com>, <fruittyloops.com>, <frutiyloops.com>, <fruttyloops.com>, <kelloggsapplejacks.com>, <kellogscornpops.com>, <kelloggcanada.com>, <kellogscerealcity.com>, <kelloggsfrutloops.com>, <poptartes.com>, <thecolorfulworldoftoucansam.com> and <toucansamy.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter “Dotregistrar.com”).

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 17, 2004; the Forum received a hard copy of the Complaint on February 20, 2004.

On February 18, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain names <applejaks.com>, <fruittyloops.com>, <frutiyloops.com>, <fruttyloops.com>, <kelloggsapplejacks.com>, <kellogscornpops.com>, <kelloggcanada.com>, <kellogscerealcity.com>, <kelloggsfrutloops.com>, <poptartes.com>, <thecolorfulworldoftoucansam.com> and <toucansamy.com> are registered with Dotregistrar.com and that Respondent is the current registrant of the names. Dotregistrar.com has verified that Respondent is bound by the 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 February 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@applejaks.com, postmaster@fruittyloops.com, postmaster@frutiyloops.com, postmaster@fruttyloops.com, postmaster@kelloggsapplejacks.com, postmaster@kellogscornpops.com, postmaster@kelloggcanada.com, postmaster@kellogscerealcity.com, postmaster@kelloggsfrutloops.com, postmaster@poptartes.com, postmaster@thecolorfulworldoftoucansam.com and postmaster@toucansamy.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 March 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 domain names are confusingly similar to one or more of Complainant’s APPLE JACKS, FROOT LOOPS, KELLOGG’S, KELLOGG’S CEREAL CITY, CORN POPS, POP-TARTS and TOUCAN SAM marks.

2. Respondent does not have any rights or legitimate interests in the disputed domain names.

3. Respondent registered and used the disputed domain names in bad faith.

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

FINDINGS

Complainant Kellogg Company, through its wholly owned subsidiary Kellogg North America Company (the second named Complainant in this dispute) is in the business of manufacturing, distributing, marketing, advertising, selling and promoting ready-to-eat cereals and convenience foods under a variety of federally registered marks, many of which have been in use for decades. These marks include the APPLE JACKS mark (e.g. U.S. Reg. No. 817,917) the FROOT LOOPS mark (e.g. U.S. Reg. No. 786,518), the KELLOGG’S mark (e.g. U.S. Reg. No. 707,012), the KELLOGG’S CEREAL CITY mark (e.g. U.S. Reg. No. 2,316,185), the CORN POPS mark (e.g. U.S. Reg. No. 1,580,348), the POP-TARTS mark (e.g. U.S. Reg. No. 791,514), and the TOUCAN SAM mark (e.g. U.S. Reg. No. 1,343,023). Complainant also operates websites reflecting its marks at the <applejacks.com>, <frootloops.com>, <kellogg.com>, <kelloggs.com>, <kelloggscerealcity.com>, <kelloggscornpops.com>, <poptarts.com> and <toucansam.com> domain names.

Respondent, Henry Chan, registered the disputed domain names between November 22, 2002 and January 29, 2004, well after Complainant had began using and obtained registrations for the above listed trademarks. Each of the disputed domain names resolve to a generic seach engine webpage that lists the relevant infringing domain name at the top of the page and then includes a search box. 

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

Complainant has established rights in the APPLE JACKS, FROOT LOOPS, KELLOGG’S, KELLOGG’S CEREAL CITY, CORN POPS, POP-TARTS and TOUCAN SAM marks through registration of the marks on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the marks in commerce.

Respondent’s <applejaks.com> and <kelloggsapplejacks.com> domain names are confusingly similar to Complainant’s APPLE JACKS mark. One of the domain names misspells Complainant’s APPLE JACKS mark, while the other actually spells it correctly and merely includes another of Complainant’s marks, the KELLOGG’S mark. Likewise, Respondent’s <kellogscornpops.com> domain name is confusingly similar to Complainant’s CORN POPS mark, although in this case Respondent chose to misspell Complainant’s KELLOGG’S mark by omitting the letter “g.” In a similar vein, Respondent’s misspelling of Complainant’s POP-TARTS mark in the <poptartes.com> domain name and Complainant’s TOUCAN SAM mark in the <toucansamy.com> domain name does not create domain names distinct from Complainant’s marks.

Respondent’s also omitted the letter “g” from Complainant’s KELLOGG’S CEREAL CITY mark with the <kellogscerealcity.com> domain name, and that domain too is confusingly similar to Complainant’s mark. With the <kelloggcanada.com> domain name, Respondent omits the letter “s” from Complainant’s KELLOGG’S mark and adds the geographical term “Canada,” which does not distinguish the domain name from Complainant’s mark. Finally, Respondent’s addition of Complainant’s KELLOGG’S mark to a misspelling of Complainant’s FROOT LOOPS mark in the <kelloggsfrutloops.com> domain name creates a domain name that is confusingly similar to the underlying marks. In each of these cases of misspelling Complainant’s marks, combining Complainant’s marks, and adding words to Complainant’s marks, Respondent’s domain names are confusingly similar to the marks they mimic. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also 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 Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

Respondent’s <fruittyloops.com>, <frutiyloops.com> and <fruttyloops.com> domain names are confusingly similar to Complainant’s FROOT LOOPS mark, in that each of them take Complainant’s fanciful spelling of the word FROOT and transform it into variations of the word “fruity.” See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for “Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning).

Finally, Respondent’s <thecolorfulworldoftoucansam.com> domain name is confusingly similar to Complainant’s TOUCAN SAM mark. The addition of the phrase “The Colorful World Of” to Complainant’s mark, like it’s addition of the word “Canada” to Complainant’s KELLOGG’S mark in the <kelloggcanada.com> domain name, does not alter the fact that the dominant feature of the domain name is Complainant’s 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).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses each of the disputed domain names to direct Internet users to generic search engine websites, presumably for its own commerical gain. Because Respondent is using unauthorized variations of Complainant’s marks for these purposes, its use of the disputed domain names does not qualify for the protections afforded Respondent by Policy ¶¶ 4(c)(i) and (iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website).

As Respondent only appears to be known as “Henry Chan,” and has not come forward with any evidence to rebut this presumption, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent either. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using each of the disputed domain names, all of which infringe on one or more of Complainant’s marks, to ensnare Internet users into viewing generic search engine websites, presumably for profit via pay-per-click fees. In registering domain names that are variations of Complainant’s federally registered marks, Respondent is attempting to attract Internet users to its websites through a likelihood of confusion in the minds of those Internet users, and Respondent’s attempt to imply that there is some sort of affiliation or endoresement of its websites by Complainant is evidence that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(vi). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”).

The Panel thus finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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  <applejaks.com>, <fruittyloops.com>, <frutiyloops.com>, <fruttyloops.com>, <kelloggsapplejacks.com>, <kellogscornpops.com>, <kelloggcanada.com>, <kellogscerealcity.com>, <kelloggsfrutloops.com>, <poptartes.com>, <thecolorfulworldoftoucansam.com> and <toucansamy.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  April 8, 2004

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