WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ken’s Foods Inc. v. kens.com

Case No. D2005-0721

1. The Parties

The Complainant is Ken’s Foods Inc., Marlborough, Massachusetts, United States of America, represented by Foley Hoag, LLP, United States of America.

The Respondent is kens.com, Ester, Alaska, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kens.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2005. On July 8, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On July 8, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 26, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2005.

The Center appointed William R. Towns as the Sole Panelist in this matter on August 31, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a leading producer of salad dressings and other sauces, sold under the registered trademark KEN’S. The mark, which the Complainant registered with the United States Patent and Trademark Office (USPTO) on April 29, 1980, has been used in commerce since 1961. The Complainant is the registered owner of the domain name <kensfoods.com>, and operates a website on which it promotes and offers for sale various products sold under the KEN’S mark. The Complainant also offers its products for sale through retail outlets.

The disputed domain name <kens.com> was registered on February 7, 1996. Until quite recently, the disputed domain name has been used to direct Internet users to a personal website maintained by Ken Woods.¹ Websites of this nature are commonly referred to as “blogs” or weblogs. A blog essentially is a diary or journal, typically written in a personal tone, where the writer or “blogger” presents his or her observations on various topics. Blogs typically contain links to other websites as well.

5. Parties’ Contentions

A. The Complainant

The Complainant asserts that the disputed domain name <kens.com> is identical to its KEN’S mark. According to the Complainant, the KEN’S mark is well known in the grocery industry, the mark is arbitrary and fanciful, and thus is entitled to the highest level of protection.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that its rights in the mark entitle it to the exclusive use of KEN’S as a domain name. Given that the mark was first used in commerce 35 years before the registration of the disputed domain name, the Complainant asserts that the Respondent was aware of its rights in the mark at the time the disputed domain name was registered, or at least had constructive notice of the mark in view of the mark’s registration some 16 years prior to the domain name’s registration.

Even if the disputed domain name incorporates the personal name of the registrant, the Complainant contends that the Respondent does not have a legitimate interest in using the domain name to operate a blog as a platform to “rant and rave, utter obscenities, display pornography and links to pornography, and solicit the sale of the domain name for an exorbitant price”.² According to the Complainant, the Respondent’s registration of the domain name prevents its valid use by the Complainant, and the Respondent’s use of the domain name tarnishes the Complainant’s mark. The Complainant further concludes from these circumstances that the Respondent registered and is using the disputed domain name in bad faith.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to the resolution of disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies available to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), a number of panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Complainant beyond question has established rights in the KEN’S mark through registration and use. The Panel finds that the disputed domain name <kens.com> is identical or confusingly similar to the Complainant’s KEN’S mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of paragraph 4(a) is simply whether the mark and domain name, when directly compared, have confusing similarity. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel finds that they do. Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant has established that the disputed domain name is identical or confusingly similar to its mark, and the record is clear that the Complainant has not authorized the Respondent to use its mark. Prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025, have viewed this as a sufficient showing by a complainant under the Policy to shift the burden to the respondent to come forward with evidence demonstrating that it has rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In this instance, the Respondent has not submitted any response to the Complaint. Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Certainly, in the absence of any submission by the Respondent, this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Nevertheless, the Complainant bears the ultimate burden of establishing under paragraph 4(a)(ii) that the Respondent has no rights or legitimate interests with respect to the domain name. After careful consideration of the record, the Panel is unable to conclude that the Complainant has met its burden under paragraph 4(a)(ii). The Complainant misapprehends the scope of the Policy in asserting that its exclusive trademark rights in the KEN’S mark confer an exclusive right to use KEN’S as a domain name. The Complainant’s reliance on prior Panel decisions in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, and Empresa Brasileira de Telecomunicações S.A. – Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164, in support of this position is misplaced. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. In each of the decisions relied upon by the Complainant, there was substantial evidence that the disputed domain names had been registered by the respondent in an attempt to profit from and exploit the complainant’s trademark. The same cannot be said here.

The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038; Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. Notwithstanding the Complainant’s contention that the KEN’S mark is distinctive in relation to the particular category of goods and services for which the mark is used, it is nonetheless a personal name – “Ken” – which is also the Respondent’s given name.³ The Complainant concedes that the Respondent has a legitimate interest under paragraph 4(c)(ii) in maintaining a weblog under a domain name that reflects his personal name, but argues that the Respondent should not be permitted to use any form of his name that is confusingly similar to the Complainant’s mark. This is little more than a restatement of the Complainant’s argument that its trademark rights entitle it to the exclusive use of KEN’S as a domain name. The Complainant’s position, if correct, would render paragraph 4(a)(ii) of the Policy superfluous.

The disputed domain name clearly reflects the Respondent’s given name, and the Panel concludes from the record as a whole that the Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c)(ii). See PENGUIN BOOKS LIMITED v. THE KATZ FAMILY and ANTHONY KATZ, WIPO Case No. D2000-0204. Even if the Respondent was aware of the Complainant’s mark when he registered the disputed domain name, the record does not support a conclusion that the Respondent registered the domain name with the intent of appropriating the Complainant’s mark for his own use. As the Complainant observes, the Respondent clearly has the right to use his own name. Without proof that the Respondent registered the disputed domain name in order to capitalize on the Complainant’s goodwill in its mark, the Complainant cannot successfully invoke the Policy’s narrow exception to the primary “first come, first served” rule in relation to domain name registrations.⁴

Accordingly, for the reasons stated above, the Panel finds that the Complainant has not met its burden under paragraph 4(a)(ii) to demonstrate that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As noted above, the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.

There is no evidence that the Respondent has engaged in an abusive pattern of registering domain names to prevent the Complainant or other trademark owners from reflecting their marks in corresponding domain names, or that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. The Complainant does not suggest that the Respondent is using the domain name in any commercial context, and the Panel does not find, based on the record before it, that the Respondent is intentionally using the domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant does assert that the Respondent registered the domain name primarily for the purpose of selling the domain name to the Complainant at an exorbitant price. The record, however, reflects no direct communications between the Respondent and the Complainant regarding the sale of the domain name at any time during the nine years that the Respondent has owned the domain name. The only evidence to support the Complainant’s contention is a statement recently posted by the Respondent in his weblog that he has received offers for the domain name, that he is not interested in selling the domain name for less than $10,000, and that the Complainant should consider buying the domain name because, in the Respondent’s opinion, the Complainant’s customers “are not smart enough to use google”.

This showing without more is not sufficient in the Panel’s opinion to establish bad faith under paragraph 4(b)(i). Selling a domain name, even at an exorbitant price, is not per se prohibited by the Policy. Rather, selling of domain names is prohibited by the Policy only if the other elements of the Policy are also violated. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638. Under paragraph 4(b)(i), the offer to sell a domain name does not constitute bad faith unless it can be shown that the seller registered the mark primarily for the purpose of capitalizing on the trademark or service mark value inherent in the name by selling it to the mark owner or its competitors. It is the Complainant’s burden to establish such bad faith registration. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.

Some nine years ago the Respondent registered a domain name reflecting his given name, which the record reflects he has used in connection with a personal website. While the disputed domain name is identical or confusingly similar to the Complainant’s mark, the circumstances of the Respondent’s registration of the domain name are not indicative of bad faith, nor does the record reflect the Respondent’s bad faith use of the domain name in an effort to profit from and exploit the Complainant’s mark. In short, the circumstances of this case do not demonstrate that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Sole Panelist

Dated: September 11, 2005

² The Complainant appears to concede that the disputed domain name reflects the possessive of the Respondent given name – i.e., “Ken’s”.

³ The Panel notes that under United States trademark laws a mark that is primarily a surname cannot be registered on the principal register of the USPTO unless it has acquired secondary meaning. 15 U.S.C. § 1052(e)(4). A designation that is likely to be perceived by prospective purchasers as the personal name of a person connected with the goods, service or business is not inherently distinctive. Rather, such a designation is distinctive only if it has acquired secondary meaning. See Restatement (Third) Unfair Competition § 14. The restriction on trademark protection for personal names protects others with the same name who may wish to use it in their business. With respect to domain names, paragraph (c)(ii) of the Policy serves a similar purpose, regardless of whether the domain name registrant has acquired trademark or service mark rights in the name.

⁴ Compare Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230 (Policy not intended to permit a party who registers or uses a common term as a trademark to bar others from using the common term in a domain name, unless the use is seeking to capitalize on the goodwill created by the trademark owner).