WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kraft Foods, Inc. v. Nowon Uknow

Case No. D2005-1153

1. The Parties

The Complainant is Kraft Foods, Inc., United States of America, represented by Debevoise & Plimpton, United States of America.

The Respondent is Nowon Uknow, Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kraftbrand.com> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 8, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On November 9, 2005, Melbourne IT trading as Internet Names Worldwide 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. The Center verified that 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 November 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2005.

The Center appointed William R. Towns as the Sole Panelist in this matter on December 20, 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 the owner of numerous registered marks for KRAFT and other marks incorporating KRAFT (hereinafter the “KRAFT marks”), in relation to a wide variety of food and beverage products. The Complainant has used the KRAFT mark to distinguish its goods and services since 1903. The Complainant’s KRAFT mark is well known both in the United States of America and internationally, as the Complainant markets over 60,000 products worldwide. The Complainant also maintains several websites utilizing the KRAFT mark, including the “www.kraftbrands.com” website, which is oriented towards children.

The Respondent registered the disputed domain name, <kraftbrand.com>, on or about October 16, 2005. The Respondent initially used the disputed domain name to direct internet users to a website displaying several sexually graphic images and offering the domain name for sale, which the website host, Yahoo!, Inc., subsequently disabled for displaying impermissible content under its terms of service. The Respondent presently appears to be passively holding the disputed domain name. The Respondent’s name – Nowon Uknow – appears to be fictitious, as does the balance of the contact information provided in connection with the registration of the domain name.¹

5. Parties’ Contentions

A. Complainant

The Complainant describes itself as one of the world’s leading producers of food and beverage products, including a wide variety of high-quality cereals, cheeses, meats, cookies, crackers, snacks, beverages and confectionery products. The Complainant states that it has used the KRAFT brand in connection with its goods and services since 1903, and that it owns 665 registrations for the KRAFT mark and trademarks incorporating the KRAFT mark, both in the United States of America and worldwide. According to the Complainant, the KRAFT mark is among the most famous and well-respected marks in the world, associated with over 60,000 products sold worldwide. Consequently, the Complainant considers the KRAFT mark to be among its most valuable assets.

The Complainant maintains that the disputed domain name is confusingly similar to the KRAFT mark, as it incorporates that mark in its entirety and also is merely a singular version the Complainant’s website domain name <kraftbrands.com>, a website the Complainant designed to be visited by children and their parents. The Complainant further asserts that the Respondent has no legitimate rights or interests in the disputed domain name, which the Respondent registered without the Complainant’s authorization. According to the Complainant, the Respondent has not been commonly known by the disputed domain name, which the Respondent has used only to divert internet users – possibly children looking for the Complainant’s “www.kraftbrands.com” website – to a website displaying pornography and offing the domain name for sale.

The Complainant contends that the Respondent’s bad faith registration and use of the disputed domain name is evidenced by the Respondent’s creation of a website displaying pornographic material and offering to sell the disputed domain name. Given that the disputed domain name is virtually identical to the Complainant’s “www.kraftbrands.com” website, intended for children and their parents, the Complainant concludes that the Respondent use of the domain name to disseminate pornographic content manifests a clear bad faith intent to harm the Complainant and its reputation, and to disrupt its relationship with its customers.

The Complainant further argues that the Respondent’s bad faith is demonstrated by the registration of the domain name using false contact information. The Complainant points out that the registrant’s purported name – Nowon Uknow – is phonetically “no one you know” phonetically, that the email address – inkogn1to@[email address] – is phonetically incognito, and that cease and desist notices sent by the Complainant to this email address were returned as undeliverable. In addition, the Complainant states that according to the U.S. Postal Service, the mailing address submitted included with the registration does not exist.

B. 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 resolving 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 Report of the WIPO Internet Domain Name Process, paragraphs 169 & 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 provided 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 Panel concludes that the disputed domain name <kraftbrand.com> is confusingly similar to Complainant’s KRAFT mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the KRAFT mark through registration and use. At a bare minimum, the mark is entitled to a presumption of validity by virtue of registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The disputed domain name incorporates the Complainant’s KRAFT mark in its entirety. 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. The Panel finds that to be the case here. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (domain name incorporating mark in its entirety is confusingly similar). The Respondent’s combination of the Complainant’s mark with the term “brand” – which if often used interchangeably with the terms “trademark” or “service mark” – compounds the confusing similarity, and strongly suggests to the Panel that the Respondent deliberately adopted the disputed domain name in order to trade on the good will and reputation of the Complainant’s mark.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the KRAFT mark. The Complainant beyond question has established rights in this mark through registration and use, and there is no indication that the Respondent has been commonly known by the disputed domain name, or that the Respondent is attempting to make any legitimate noncommercial use of the domain name. Instead, the record reflects that the Respondent has used the disputed domain name to divert internet users to a website where the Respondent has displayed sexually graphic content in violation of the website host’s terms of service, and offered the disputed domain name for sale. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. 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 case, 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. Robertson, WIPO Case No. D2000-0009. Nevertheless the ultimate burden of proof on the legitimacy issue rests with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Panel notes that under certain circumstances an offer to sell a domain name may be considered an “offering of goods or services” within the meaning of paragraph 4(c)(i). Nevertheless, for purposes of this paragraph the Respondent must be using the domain name in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)).²

The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Under the circumstances of this case, the Panel concludes that the Respondent registered the mark primarily for the purpose of capitalizing on the trademark or service mark value inherent in the name by attempting to sell domain name to the Complainant or its competitors. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638.³ Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii).

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; or

(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; or

(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 overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that 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. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In this case, the totality of circumstances demonstrates the Respondent’s bad faith registration and use of the disputed domain name under paragraph 4(a)(iii). The circumstances of this case support a finding that the Respondent deliberately chose the <kraftbrand.com> domain name in order to capitalize on the trademark or service mark value inherent in the KRAFT mark. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its mark or products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. The Panel concludes that the Respondent registered the disputed domain name primarily for the purpose of capitalizing on the trademark or service mark value inherent in the name by selling it to the Complainant or its competitors. This constitutes bad faith under paragraph 4(b)(i).

The fact that the Respondent appears only to be passively holding the disputed domain at present does not preclude a finding of bad faith registration and use under the circumstances of this case. Under certain circumstances bad faith may be inferred from a respondent’s passive holding of a domain name. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that passive holding of a domain name may support a finding of bad faith use where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate.

The critical circumstances that supported a finding of bad faith in Telstra are present in this case as well. In Telstra, as in this case, the complainant’s mark had a strong reputation and was well known. As is the case here, the mark was not susceptible to use in a generic sense. In Telstra, as here, the respondent had taken active steps to conceal its true identity, including actively providing false contact information to the domain name registrar, and there was no evidence of any actual or contemplated good faith use of the domain name. The totality of such factors led the Telstra panel to conclude that there was no conceivable use for which the respondent could have registered the domain name that “would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”. Id. The totality of these factors leads this Panel to the same conclusion here.

The Policy is designed 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. This Panel is persuaded by the totality of the circumstances in this case that the Respondent’s primary motive for the registration of the disputed domain name was cybersquatting. For the reasons set forth above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kraftbrand.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: January 1, 2006

¹ Nowon Uknow is “no one you know” phonetically. Cease and desist notices sent by the Complainant to this email address provided by the Respondent at the time of registration were returned as undeliverable. The U.S. Postal Service has indicated that the mailing address submitted included with the registration does not exist.

² Under Paragraph 4(b)(i), an offer to sell a domain name does not constitute bad faith unless the seller registered the domain name 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. See 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.

³ The Respondent’s offer to sell the domain name to the public can be deemed an offer to sell to the Complainant or its competitors. Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129. See National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777 (respondent’s offer to sell domain name to highest bidder betrays clear motive to extract maximum obtainable profit for domain name, and comports with Paragraph 4(b) example of bad faith).