WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aurora Foods Inc. v. David Paul Jaros

Case No. D2000-0274

 

1. The Parties

The Complainant is Aurora Foods Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Columbus, Ohio, USA.

The Respondent is David Paul Jaros, with address in Orlando and Winter Park, Florida, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "duncanhine.com".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on

April 7, 2000, and by courier mail received by WIPO on April 10, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 12, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On April 12, 2000, WIPO completed its formal filing compliance requirements checklist.

b) On April 17, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.

c) On May 9, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail.

d) On May 24, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 24, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e) On May 24, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 7, 2000. On May 24, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has provided copies (Complaint, Annex D) of seven U.S. Patent and Trademark Office trademark registrations for "Duncan Hines" standing alone and in combination with additional English-language words or approximations of such words. These are: registration number Reg. No. 835,567, dated September 16, 1967, on the Principal Register, for "Duncan Hines", covering, prepared cake mixes; registration number 1,299,761, dated October 9, 1984, on the Principal Register, for "Duncan Hines", covering ready-to-spread frostings and cookies; registration number 1,942,711 dated December 19, 1995, on the Principal Register, for "Duncan Hines", covering hot cocoa mix; and registrations number 1,788,936, dated August 17, 1993, number 1,907,900, dated July 25, 1995, number 2,001,913, dated September 17, 1996, and number 2,001,914, dated September 17, 1996, on the Principal Register, covering "Duncan Hines Chocolate Lovers", "Duncan Hines Chocolate Loversí Exxtra", "Duncan Hines Angel Cups" and "Duncan Hines Kids Cups", respectively. Complainant has provided certified title copies for such registrations, and represents that these trademark registrations remain valid and subsisting. The validity of Complainantís trademark registrations for "Duncan Hines", in and out of combination with other words, has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of valid trademark registrations for "Duncan Hines" in the United States.

Complainantís trademark registrations indicate use of the "Duncan Hines" trademark at least as early as 1967, and Complainant represents that the trademark "Duncan Hines" has been used in commerce since at least as early as 1949 (Complaint, para. 13). Respondent has not contested Complainantís use of the trademark in commerce.

Network Solutionsí WHOIS database query response (Complaint, Annex A) indicates that David Paul Jaros, with Administrative Contact at "Jaros, David", is the registrant of the domain name "duncanhine.com". The record of this registration was created on August 21, 1999, and was last updated on November 5, 1999.

There is no record in this proceeding of any use or preparation for use of the domain name "duncanhine.com" by Respondent in connection with an active website.

On September 21, 1999, Respondent sent an e-mail message to Complainant with the following text:

"My company is in possession of the website addresses Ö www.DuncanHine.comÖ These site addresses, although not turned on, are currently attracting over 4000 hits per day while parked! These site addresses are being offered for rental at only ?275 [sic] per month. Then, all of these visitors will be quickly forwarded to the website of your choice! The number of visitors these addresses attract will be well worth this tax-deductible rental expense for your company. We will rent these site addresses to any party willing to pay these very reasonable tax deductible rental fees and then attract this large number of visitors to their website of choice. Call Now for more info: David Jaros Ö"

Respondent has not disputed the authenticity of this e-mail record provided by Complainant, nor has Respondent disputed that it was the originator of this message. The Panel finds as an undisputed fact that the foregoing e-mail message was transmitted by Respondent to Complainant on September 21, 1999.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant indicates that it is the holder of seven trademark registrations for "Duncan Hines", used alone or in combination with other words (and their approximations) (Complaint, para. 12) (see Factual Background, supra). Complainant indicates that it has "been using the trademark Duncan Hines since at least as early as 1949 for cake mixes (including pie mixes, muffin mixes, and brownie mixes), frostings, cocoa mix and cookies" (id., para. 13).

Complainant indicates that it has made a number of unsuccessful demands on Respondent to cease and desist from use of the disputed domain name, and demanding that Respondent transfer that name to it (id., paras. 15-16, Annex E).

Complainant states that "duncanhine.com" is confusingly similar to its trademark "Duncan Hines" (id., para. 17). It states:

"17. The registered domain nameís only distinguishable characteristic from the Complainantís registered trademark is that the domain name is missing the "s" at the end of the domain name.

"18. The registered mark DUNCAN HINES and the domain name DUNCANHINE.COM are confusingly similar. Making a mark plural or making a mark singular has no trademark significance. In other words, just because the domain name duncanhine.com does not contain the "s" found in the registered mark DUNCAN HINES, does not make DUNCANHINE.COM "different" in terms of trademark protection. The test for likelihood of confusion is whether the marks create the same overall impression. Visual Information Institute v. Vicon Industries, 209 USPQ 179 (TTAB 1980). "Duncan Hines" and "duncanhine" give the same overall impression and thus, DUNCAN HINES and DUNCANHINE.COM are confusingly similar." (id.)

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name (id., para. 20).

Complainant indicates that Respondent registered and has used the disputed domain name in bad faith, referencing Respondentís offer to rent the name to Complainant, and stating: "The foregoing language demonstrates that Respondent registered DUNCANHINE.COM for the sole purpose of disrupting Complainantís business and to rent the domain name for more money than the cost of the domain name registration." (Id., para. 25).

Complainant requests that the Panel ask the Registrar to transfer the domain name "duncanhine.com" from Respondent to it. (Id., paras. 31-32).

B. Respondent

Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail, that the party designated as the Administrative Contact for the Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 14(b)).

Complainant is the holder of a registered trademark for "Duncan Hines" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "Duncan Hines". Based on the September 16, 1967, date of Complainantís initial registration of the trademark "Duncan Hines" (and without prejudice to Complainantís claims of earlier-arising rights in the mark), the Panel determines that Complainantís rights in the trademark arose prior to Respondentís registration, on August 21, 1999, of the disputed domain name "duncanhine.com".

Respondent has registered the domain name "duncanhine.com". This name is identical to Complainantís trademark "Duncan Hines", except that (1) the domain name adds the generic top-level domain name ".com", and (2) the domain name employs lower case letters, while the trademark is generally used with initial capital letters, and (3) the domain name omits the letter "s" from the term "Hines".

In so far as domain names are not case sensitive, and the elimination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "duncanhine.com", and elimination of the space between the words "Duncan" and "Hine" to form that name, are differences without legal significance from the standpoint of comparing "duncanhine.com" to "Duncan Hines". Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services.

A determination regarding the confusing similarity of a trademark and domain name in a case where there are differences in the spelling of terms involves a multifactored analysis that may take into account, inter alia, the impression that the different spellings make to the sight and hearing of the consumer or user, and the extent to which the allegedly confusing names are used in related channels of trade. In this case, the sole difference in spelling between the trademark and the disputed domain name is omission of the "s" at the end of "Hines". The Panel determines that the terms "Hine" and "Hines", when used in combination (and following) the term "Duncan", are confusingly similar in appearance and sound to a consumer or Internet user. The terms "duncanhine.com " and "Duncan Hines" are confusingly similar in appearance and sound. Since Respondent has deliberately registered the disputed domain name because of its potential to attract customers or Internet users who would be seeking a website maintained by Complainant, it has stepped directly into Complainantís channel of trade. The panel determines that "duncanhine.com" and "Duncan Hines" are confusingly similar in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "duncanhine.com", other than that it has registered this domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain name. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondentís] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)).

Respondent has attempted to rent the disputed domain name to Complainant, owner of the trademark "Duncan Hines", for valuable consideration (at least $275 per month). This amount, in the absence of proof to the contrary from Respondent, is presumed and determined to be in excess of its out-of-pocket costs related to the disputed domain name. There is no evidence on the record of any purpose for Respondentís registration of the name other than to offer it for rent it to Complainant, and the Panel finds that this was Respondentís primary purpose for registration. Respondent, in its offer to Complainant, indicates that it is prepared to rent the disputed domain name to any party willing to pay its price. This statement by Respondent is reasonably construed as a threat to disrupt the business of Complainant if its offer is not accepted, and does nothing to insulate the character of the offer for rent as involving bad faith within the meaning of paragraph 4(b)(i) of the Policy. The Panel determines that Respondent acted in bad faith in registering and using the disputed domain name. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "duncanhine.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, David Paul Jaros, has engaged in abusive registration of the domain name "duncanhine.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "duncanhine.com" be transferred to the Complainant, Aurora Foods Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: June 7, 2000


 

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. For purposes of making its determination in this proceeding, the Panel does not need to consider the significance of Complaintís word marks that combine "Duncan Hines" with additional terms.

3. The Panel recognizes that Respondent has used the disputed domain name in e-mail correspondence to Complainant with capitalization of the initial "D" and the initial "H". Because domain names are not case sensitive, the Panel regards this alternative usage as immaterial.

4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.

6. See, e.g., Brookfield Communications, supra note 5, 174 F. 3d 1054-61, citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).