DECISION

Gerber Products Company v. Cybertexx.com

Claim Number: FA0404000257646

PARTIES

Complainant is Gerber Products Company (“Complainant”), represented by Baila H. Celedonia, of Cowan, Liebowitz & Celedonia, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799.  Respondent is Cybertexx.com (“Respondent”), P.O. Box 243, Auburn, IN 46706-0243.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gerberbabyfoods.com> (the “Domain Name”) registered with Go Daddy Software, Inc. (the “Registrar”).

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.

Michael Albert as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 20, 2004; the Forum received a hard copy of the Complaint on April 22, 2004.

On April 20, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <gerberbabyfoods.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 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@gerberbabyfoods.com by e-mail.

A timely Response was received and determined to be complete on May 17, 2004.

An Additional Submission was received from Complainant dated May 24, 2004.  Respondent filed an Additional Submission on May 31, 2004.

On May 27, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

- it began producing strained baby food in connection with the GERBER mark in the United States in 1928, and now manufactures nearly 190 food products labeled in 16 languages and distributed to 80 countries;

- it is the owner of the GERBER mark, a world-famous mark in the field of baby food and infant care products;

- it owns several registrations for the GERBER mark in the United States including Reg. No. 574,727 for GERBER® (Stylized); Reg. No. 560,057 for GERBER® and Design; Reg. No. 405,310 for GERBER® and Design; as well as other registrations throughout the world;

- Complainant owns the domain name <gerber.com>, as well as numerous variations thereof in the .com and other gTLDs and ccTLDs;

- the Domain Name is identical or confusingly similar to Complainant's registered GERBER mark and to Complainant’s domain name <gerber.com>, with only the addition of certain generic words that enhance rather than detract from the association with Complainant;

- Respondent has no legitimate rights or interests in the name in that it is not Respondent’s personal name, Respondent is not known by that name, and Respondent does not engage in any legitimate business under the Domain Name;

- Respondent’s registration and use of the Domain Name has been in bad faith, including in that Respondent has used the Domain Name to redirect web traffic to one of Complainant’s competitors.

B. Respondent

Respondent contends that:

- the Domain Name includes two generic words and therefore is not confusingly similar to the admittedly famous and protected mark GERBER;

- there are other users of the mark GERBER for other goods or services;

- the Domain Name is not currently in use;

- the registration was “more a renewal than a registration” since, after Respondent’s original registration of the Domain Name in November 2003 lapsed, Respondent re-registered the Domain Name through a different registrar in January 2004;

-  Respondent used the Domain Name to operate a discussion page about baby food, which constituted a noncommercial or “fair use” of the Domain Name;

- Complainant lacks sufficient evidence of its claim that Respondent used the Domain Name to link to a competitor’s website because the screen shots purporting to evidence such use are unsupported by any affidavit.

C. Additional Submissions

Complainant filed an Additional Submission, primarily to rebut Respondent’s contention that the screen shots showing Respondent’s Domain Name linked to a competitor’s website were unsupported with evidence.  Attached to the Additional Submission was an affidavit establishing when and how the screen shots were printed.

Respondent filed an Additional Submission which claims that Complainant’s Additional Submission was an improper amendment of its Complaint.  Respondent further argues that the Additional Submission was untimely in that it was unaccompanied by the requisite fee.

FINDINGS

The Panel finds that Complainant has established that it owns the mark GERBER, which is a strong, federally-registered trademark of considerable duration and fame.  The Panel finds that Respondent has not established that it has any legitimate rights to the Domain Name in that it has not persuasively established that it has made any noncommercial or fair use of the Domain Name as it contends.  Finally, the Panel finds that Complainant has established that Respondent has registered and used the Domain Name in bad faith. 

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; and

(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

Complainant has established rights in the GERBER mark by using it in commerce for over seventy-five years and by registering it with the U.S. Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (noting that prior Panel decisions have held that 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 rebutting the presumption of distinctiveness, and has not even attempted to do so; indeed Respondent admits that the GERBER mark is protected and famous.

There is no relevance to Respondent’s contention that there are other users of GERBER marks.  These uses do not appear to be in connection with baby food, and there is no evidence that they undermine the strength of Complainant’s mark or the validity of its registrations.

The only difference between the Domain Name and Complainant’s admittedly famous and federally-registered GERBER mark is the addition of the words “baby” and “foods” to Complainant’s mark.  The addition of these words does not obviate confusion.  On the contrary, it enhances the likelihood of confusion because of the fact that Complainant’s mark is well known to be associated with the provision of baby foods. 

It is well established in prior UDRP cases that the addition of generic terms does not avoid a finding of confusing similarity between a domain name and a mark.  See, e.g., Savin Corp. v. Mowbray, FA 103869 (Nat. Arb. Forum, Mar. 1, 2002) (finding <savincity.com> identical or confusingly similar to complainant’s mark SAVIN); State Farm Mut. Auto. Ins. Co. v. All Phase Builders, FA 99608 (Nat. Arb. Forum, Oct. 11, 2001) (finding confusing similarity between STATE FARM and <statefarm-claims.com>); Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO, Jan. 29, 2001) (finding domain names wholly incorporating complainant’s mark and adding generic terms “PIER,” “PIERS,” “PIERING” or “INC” to be confusingly similar to complainant’s mark); Quixtar Invs., Inc. v. Hoffman, D2000-0253 (WIPO, May 29, 2000) (finding <quixtarmortgage.com> identical or confusingly similar to QUIXTAR). 

In fact, the addition of the generic terms “baby” and “foods” to Complainant’s GERBER mark only increases the likelihood of confusion, as Complainant is primarily known for its baby food products.  Internet users are likely to conclude that the domain name is Complainant’s, or is associated with Complainant.  See State Farm Mut. Auto. Ins. Co. v. All Phase Builders, FA 99608 (Nat. Arb. Forum, Oct. 11, 2001) (finding that the addition of a term that refers to complainant’s services increases the likelihood of confusion); Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO, Jan. 29, 2001) (finding that the addition of terms that refer to complainant’s services increases the likelihood of confusion).

The deletion of the spaces between “gerber,” “baby” and  “foods” in Respondent’s domain name likewise does not obviate confusion, as that usage simply reflects a functional limitation of the Internet naming system. See, e.g., Hannover Ruckversicherungs-Aktiengesellschaft v. Ryu, FA 102724 (Nat. Arb. Forum, Jan. 7, 2002) (finding <hannovere.com> identical to HANNOVER RE); CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO, Sept. 4, 2000) (finding <ilovelucy.com> identical to I LOVE LUCY); Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding <mrsworld.net> identical to MRS. WORLD). 

In sum, the Domain Name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Respondent contends that it used the Domain Name for a noncommercial purpose, namely to host a discussion forum about baby food.  If this were in fact true, it would present at the very least a prima facie argument for legitimate interests.  The Panel, however, is unpersuaded of the veracity of this assertion.  First of all, Respondent offers no proof or evidence of any kind to support this contention.  Respondent does not even provide an affidavit asserting that this usage occurred, let alone any print-outs of any pages reflecting the existence of such a discussion forum.  Instead, Respondent states:

Respondent developed a web site residing at www.gerberbabyfoods.com shortly after its inception in 1999. This web site consisted of a simple discussion page where Internet visitors could post and reply to concerns about feeding their children with packaged baby food, primarily those produced by Gerber.  This web site drew plenty of visitors with these concerns and the comments posted reflected these concerns. Respondent always considered this web site to be good faith and used to deliver parents a question and answer type discussion board with broad and public opinion where they could express their concerns about feeding their children with these products. The Internet made all this easier with its capability to reach a world-wide audience. Respondent does not have any archived "screenshots" as he did not anticipate to have this dispute heard any time in the future. Furthermore, Respondent due to the non-commercial activity associated with the disputed domain name never archived any records of traffic, visitors or text logs of the subjects, people, internet visitors or other involved in discussions.  Respondent is offering this as a self-serving statement just like Complainant is alleging in their complaint that a company representative recorded a "screenshot" of a computer screen.

Assuming arguendo that a usage of the type Respondent refers to would be a legitimate noncommercial use, Respondent’s contention that it operated such a forum is unpersuasive to this Panel.  First of all, Respondent offers no testimony, such as an affidavit, establishing under oath and penalty of perjury that such a forum existed.  Secondly, Respondent has apparently been entirely unable, despite the numerous research and retrieval tools available on the Internet, to unearth a single document constituting or reflecting the discussions which it claims occurred.  (Complainant, on the other hand, has provided printouts from the Internet web page archiving service located at <archive.org> which establish the uses discussed by Complainant but not those alleged by Respondent.). 

Despite these two deficiencies, the Panel might still have been willing to give Respondent the benefit of the doubt, but for the fact that Respondent undermined its own credibility through its contention, discussed further in the next section of this Decision, that it never used the Domain Name to link to the website of one of Complainant’s competitors.

Respondent does not merely put Complainant to its proof, requiring Complainant to meet its burden.  Instead, Respondent affirmatively “denies allegations that the domain name gerberbabyfoods.com resided [sic] to any of the web-sites claimed in the Complaint.”  The evidence put forward by Complainant, however, clearly establishes that the Domain Name did in fact resolve to the website of H. J. Heinz Co., a competitor of Complainant’s in the baby food industry.  The screen shots attached to the Complaint make this fact clear.  Respondent’s willingness to make a representation to this Panel that is unsupported by any evidence and flatly inconsistent with the evidence in the record leaves the Panel unable to credit other unsupported assertions made by Respondent including that Respondent at one time operated a legitimate discussion forum on baby food – a claim for which, again, there is no evidence.

Registration and Use in Bad Faith

The Domain Name does not at present resolve to any website.  Previously, however, Respondent used the Domain Name to link to the website of H. J. Heinz Company, a competitor of Complainant.  Attached to the Complaint are screen shots taken on March 8, 2004 showing that Heinz’s website was accessible through the Domain Name.  The content of the screen shots further demonstrates that Heinz is a provider of baby food products which compete with Complainant’s baby food products. 

Numerous panels have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes “bad faith” under the Policy.  See, e.g., Edmunds.com v. Ultimate Search, Inc., D2001-1319 (WIPO Feb. 1, 2002) (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enters., D2000-1768 (WIPO Apr. 4, 2001) (“[R]egistration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s web site to the web site of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use.”); Zwack Unicom Ltd v. Duna, D2000-0037 (WIPO Mar. 10, 2000) (respondent’s linking to complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding bad faith where respondent used the disputed domain name to “redirect[] the Complainant’s consumers and potential consumers to commercial web sites which are not affiliated with Complainant.”); Marriott Int’l, Inc. v. Kyznetsov, FA 95648 (Nat. Arb. Forum. Oct. 24, 2000) (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

Respondent initially claimed that there was insufficient evidence that these screen shots were accurate depictions of sites to which the Domain Name linked.  In particular, Respondent questioned the absence of affidavit evidence establishing the authenticity or date of the screen shots.  Notably, however, Respondent failed to come forward with any affidavit of its own that denied that the screen shots accurately reflected the websites that at one time were accessible at the Domain Name.  At that time, to be sure, the burden of proof rested on Complainant and accordingly it was at least arguable that Respondent had no obligation to come forward with any such evidence.  The Panel finds that the screen shots appended to the Complaint were, in and of themselves, and in the absence of adequate explanations from Respondent to the contrary, sufficient to persuade the Panel that, more likely than not, the Domain Name did at one time resolve to the website of a competitor of Complainant’s. 

UDRP cases are not governed by the same rules of evidence that govern court proceedings.  Instead, it is the Panel’s obligation to draw reasonable inferences from the materials presented, and accord them such weight as the Panel deems appropriate.   While affidavit evidence is preferred, and is often considerably more credible and persuasive than unsworn evidence, the presence of an affidavit to authenticate a document is not a threshold requirement for the admissibility of the document in a proceeding under the Policy.  In this case, the Panel has no reason to question the authenticity of the screen shots, nor indeed did Respondent articulate any outright claim that they were forged or otherwise unreliable.  Accordingly, the evidence that Respondent did precisely what Complainant asserts is compelling. 

The authentication dispute, moreover, was mooted by the Additional Submissions.  In its Additional Submission, Complainant provided precisely the affidavit Respondent claimed was lacking.  Strikingly, even then, Respondent’s response did not include any contrary affidavit.  Instead, Respondent averred that Complainant’s submission was unaccompanied by the required fee.  Whether or not that assertion is accurate is immaterial to the substantive question that this Panel is charged with resolving, namely whether Complainant has shown, more likely than not, that Respondent acted in bad faith.  Complainant has amply met that burden.

Finally, the Panel finds that there is no relevance to the fact that the Domain Name is not currently in use.  Prior bad faith registration and use suffices under the Policy.  Nor is it relevant that Respondent arguably “renewed” the registration in January 2004 rather than that having been its initial registration.  The result is the same under either view of that fact. 

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 <gerberbabyfoods.com> domain name be TRANSFERRED from Respondent to Complainant.

Michael Albert, Panelist
Dated: June 15, 2004

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