DECISION

Hormel Foods Corporation v. Lee Brown

Claim Number: FA0311000213442

PARTIES

Complainant is Hormel Foods Corporation (“Complainant”) represented by Melanie J. Gilbert, of Hormel Foods Corporation, 1 Hormel Place, Austin, MN 55912-3680.  Respondent is Lee Brown  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <spamfreeporn.com>, registered with Network Solutions, Inc.

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.

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 20, 2003; the Forum received a hard copy of the Complaint on November 21, 2003.

On November 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <spamfreeporn.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 2003 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@spamfreeporn.com by e-mail.

Although the Respondent did not submit a formal Response, it did respond by email on December 11, 2003.

On December 31, 2003 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be cancelled.

PRELIMINARY PROCEDURAL MATTER

Respondent failed to include the certification statement required by ICANN Rule 5(b) (viii). However, although he has made clear and compelling points in his favour, the structure of the Response makes it clear that he has prepared it without legal advice. Nothing in the Response relied upon by the Panelist to come to its decision are matters about which the Panelist need have any concerns as to whether Respondent is telling the truth as Respondent largely demonstrates his case by matters of public record. Accordingly, it is clear in this case that “ruling the Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process”. (Quote from Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002)). Accordingly the Panelist has ruled the Response admissible in this case.     

PARTIES’ CONTENTIONS

A. Complainant

Complainant’s relevant submissions can be summarized as follows.

Complainant is the owner of the registered trademark SPAM, first used over sixty years ago for canned, processed meat products. Complainant has U.S. trademark registrations for not only processed meat, but also, inter alia, clothing, kitchen hand-tools, jewelry, playing cards, mugs, toys, mail order catalogue services for such goods, museum services, exhibitions, cookery and other contests and automobile race services.   It also has a number of derivative marks such as SPAMARAMA for entertainment services, SPAMBURGER for processed meat, SPAMTASTIC for mail order catalogue services. Complainant has a website at <spam.com> which is a significant way in which Complainant promotes its goods and services.

The domain name is confusingly similar to the SPAM trademark and <spam.com> website owned by Complainant. SPAM is a famous mark entitled to a broad scope of protection even as against noncompetitive goods and services. As a result, confusion amongst consumers is extremely likely to arise due to Respondent’s use of SPAM. The Respondent is using Complainant’s mark to promote its website with pornographic content. Consumers are likely to recognize SPAM in the domain name and mistakenly believe that Complainant endorses, sponsors or is affiliated with Respondent and its pornographic website. This will also result in dilution of the SPAM mark and conveys a negative disparaging and harmful connotation to Complainant’s SPAM mark and its family of SPAM marks.   

In view of the decision taken by the Panelist in this case there is no need to review Complainant’s submissions on legitimate usage and bad faith.

B. Respondent

In view of the decision taken by the Panelist relevant submissions in the Response include:

A search on any of the major search engines for the term “spamfree” brings up thousands of sites using this term.

The following excerpts are taken from Complainant’s website at <spam.com>:

“You’ve probably seen, heard of or even used the term “spamming” to refer to the act of sending unsolicited commercial email (UCE) or “spam” to refer to the UCE itself. Following is our position on the relationship between UCE and our trademark SPAM.” 

“We do not object to use of this slang term to describe UCE, although we do object to the use of the word “spam” as a trademark and to the use of our product image in association with that term. Also, if the term is to be used, it should be used in all lower-case letters to distinguish it from our trademark SPAM, which should be used with all uppercase letters.”

“This slang term, which generically describes UCE, does not affect the strength of our trademark SPAM.”

Respondent has never tried to confuse its site with Complainant’s product, use the term “spam” as a trademark or use the product image.

All three words “spam,” “free,” and “porn” appear in the English dictionary. The definition of spam is, “unsolicited email, often of a commercial nature, sent indiscriminately to multiple mailing lists, individuals or newsgroups: junk email.”

“The Complainants in this case know that there is no way any rational person would ever mistake my website or the spamfreeporn.com domain with the luncheon meat product SPAM.”

The U.S. government is trying to pass a bill banning spam. Respondent has heard of no complaints from Complainant about the use of the word “spam” in the bill.        

FINDINGS

The domain name is clearly generic and refers to unsolicited email and does not refer to Complainant or its trademark and would not be thought by any rational person to do so. It is not identical or confusingly similar to Complainant’s SPAM trademark.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 Panelist agrees with Respondent on this issue. Respondent is using the common slang term “spam” to refer to unsolicited email. This is made clear by the addition of the words “free” in the domain name, “spam free” being a common way of expressing that there is no risk of unsolicited email. “Spam free” does not appear to be a commonly used or understood expression in the context of Complainant or its trademark. Complainant’s own website states that the term “spam,” meaning unsolicited email, is generic.  No rational person reading the domain name would believe that it was referring to Complainant and would understand from the domain name that Respondent was offering a pornographic website where subscribers need not worry about receiving unsolicited mail as a result of using the site. Complainant’s website also admits that the use of the slang term “spam” does not affect the strength of its trademark which would appear to contradict its assertion that the domain name will have an impact upon and dilute its mark. Other famous trademarks such as “Shell,” “Apple” and “Polo” have generic meanings and these trademark owners would not be able to show confusing similarity or prevent use of the relevant words in a domain name where it was obvious from the domain name itself that no reference whatsoever was being made to the trademark owner.   The Panelist holds that the domain name is not identical to or confusingly similar to Complainant’s trademark.   

Rights or Legitimate Interests

Given the Panelist’s finding on confusing similarity there is no need to consider the further issue of legitimate interests.

Registration and Use in Bad Faith

Given the Panelist’s finding on confusing similarity there is no need to consider the further issue of bad faith.

DECISION

Having found that Complainant has failed to show that the domain name is identical or confusingly similar to its trademark, the Panel concludes that relief shall be DENIED.

Dawn Osborne, Panelist
Dated:  January 19, 2004

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