WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sunkist Growers, Inc. v. S G and Delmonte-Asia.com

Case No. D2001-0432

 

1. The Parties

The Complainant is Sunkist Growers, Inc., a corporation organized and existing under the laws of California with a place of business at 720 E. Sunkist Street, Ontario, California 91761-0993, U.S.A.

The Respondent S G ("First Respondent") is an entity with an address at Igokdong Dalseogu, Daegu, 704-140, Korea. The Respondent Delmonte-Asia.com ("Second Respondent") is an entity with an address at Melrose avenue (sic), Denber (sic), CO 90038, U.S.

 

2. The Domain Names and Registrar

The contested domain names are <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com>.

The registrar is Network Solutions, Inc.

 

3. Procedural History

The electronic version of the Complaint was filed on March 27, 2001. The hardcopy of the Complaint was received on March 28, 2001.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.

On April 6, 2001, the Center formally notified the Respondents by post/courier and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN. The couriers to the Respondents were returned to the Center on April 13, 2001 and April 18, 2001.

The Respondents failed to file a Response. On April 27, 2001, the Center sent a Notification of Respondent Default by email to the Respondents and the Complainant. The emails to the Respondents at onetz@kebi.com and registrar@kebi.com were successfully transferred.

The Center contacted John Swinson and requested that he act as panelist in this case. Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On May 8, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 22, 2001.

The language of the proceeding is English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and th WIPO Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondents; the administrative panel was properly constituted.

 

4. Factual Background

The Complainant owns the following U.S. trademark registrations for marks containing the term SUNKIST:

● Registration No. 2435807 for the trademark SUNKIST;

● Registration No. 2419996 for the trademark SUNKIST;

● Registration No. 2413128 for the trademark SUNKIST;

● Registration No. 2403459 for the trademark SUNKIST PREMIUM FLOWERS;

● Registration No. 2373964 for the trademark SUNKIST;

● Registration No. 2339263 for the trademark SUNKIST;

● Registration No. 2230934 for the trademark DIET SUNKIST;

● Registration No. 2230933 for the trademark DIET SUNKIST;

● Registration No. 2229121 for the trademark SUNKIST;

● Registration No. 2229120 for the trademark SUNKIST;

● Registration No. 1970578 for the trademark SUNKIST;

● Registration No. 1970577 for the trademark SUNKIST;

● Registration No. 1967441 for the trademark SUNKIST;

● Registration No. 2042206 for the trademark SUNKIST;

● Registration No. 1867732 for the trademark SUNKIST JUICE BITES;

● Registration No. 1828990 for the trademark SUNKIST;

● Registration No. 1772513 for the trademark SUNKIST;

● Registration No. 1692224 for the trademark SUNKIST;

● Registration No. 1171525 for the trademark DIET SUNKIST;

● Registration No. 1142793 for the trademark SUNKIST;

● Registration No. 1383543 for the trademark SUNKIST FUN FRUITS;

● Registration No. 1614130 for the trademark SUNKIST;

● Registration No. 1614129 for the trademark DIET SUNKIST;

● Registration No. 1599804 for the trademark DIET SUNKIST;

● Registration No. 1598865 for the trademark SUNKIST;

● Registration No. 1372857 for the trademark SUNKIST;

● Registration No. 1372894 for the trademark SUNKIST;

● Registration No. 1260159 for the trademark SUNKIST;

● Registration No. 1261871 for the trademark DIET SUNKIST;

● Registration No. 1224371 for the trademark SUNKIST;

● Registration No. 1215135 for the trademark SUNKIST;

● Registration No. 1243278 for the trademark SUNKIST;

● Registration No. 1188841 for the trademark SUNKIST;

● Registration No. 1001161 for the trademark SUNKIST;

● Registration No. 1001160 for the trademark SUNKIST;

● Registration No. 1001158 for the trademark SUNKIST INVITATIONAL;

● Registration No. 0726900 for the trademark SUNKIST;

● Registration No. 0924836 for the trademark SUNKIST;

● Registration No. 0878962 for the trademark SUNKIST;

● Registration No. 0808069 for the trademark SUNKIST;

● Registration No. 0599437 for the trademark SUNKIST;

● Registration No. 0578492 for the trademark SUNKIST; and

● Registration No. 0563438 for the trademark SUNKIST.

The domain names <sunkistgrowers.org> and <sunkistgrowers.net> currently resolve to a single webpage regarding "Sun Korean International Science Technology Growers". The webpage does not contain any links to any other webpages. The email contains a link that generates an email addressed to registrar@kebi.com.

The domain name <sunkistasia.com> currently resolves to a single placeholder webpage displaying a message that it is "the future home ofÖ www.sunkistasia.com".

 

5. Partiesí Contentions

A. Complainant

Complainant is an agricultural marketing cooperative which is engaged in the business of marketing fresh citrus fruit and processed citrus products throughout the world. It is the successor in interest, by change of name, to the California Fruit Growers Exchange, a cooperative of fruit growers, which was organized in 1905. Complainant has used the mark SUNKIST as a trademark since as early as 1908 in connection with the marketing and sale of its fruit, and Complainant first licensed the use of its SUNKIST mark as early as 1957. In 1952, the California Fruit Growers Exchange officially changed its name to Sunkist Growers, Inc. to associate the brand name with the corporate organization. Since that time, Sunkist Growers, Inc. has been used continuously to date to identify Complainant.

Complainant is the owner of 53 U.S. trademark and service mark registrations for the term SUNKIST either alone and/or in combination with another word(s), design(s), etc. Complainant owns trademark and service mark applications and registrations of the term SUNKIST either alone and/or in combination with another word(s), design(s), etc., in over 150 countries, including 19 registrations and 1 application in South Korea.

Complainant markets its products throughout the world and always uses its trade name SUNKIST GROWERS in such promotion.

Complainant is the owner of the domain names <sunkistgrowers.com>, <sunkist.com>, <sunkist.net>, <sunkist.org>, and <sunkist-ppd.com> and many other domain names for sunkist with country endings throughout the world. Complainant operates a website at <sunkist.com>.

By virtue of the Complainantís extensive and long use, advertising, promotion and sale of its goods and services throughout the United States and the world, Complainantís SUNKIST marks and SUNKIST GROWERS trade name have become well-known and famous in the United States and abroad as an indicia of origin for Complainantís goods and services.

The Complainant contends that the First Respondent and the Second Respondent are one and the same entity. The Complainant observed that the contact details and domain name servers contained in the WHOIS database for <sunkistasia.com> are practically identical to the WHOIS information provided when the First Respondent registered the domain names <sunkistgrowers.net> and <sunkistgrowers.org>. The addresses of the registrants, the administrative, billing and technical contacts, the telephone numbers and the domain name servers were identical. The original administrative and billing contact for <sunkistgrowers.net> and <sunkistgrowers.org>, Sean Bay, remains the administrative and billing contact for the domain name <sunkistasia.com>.

In relation to the First Respondentís domain names, <sunkistgrowers.net> and <sunkistgrowers.org>, the Complainant contends that:

(a) the domain names are identical to and confusingly similar to the Complainantís trade name SUNKIST GROWERS and confusingly similar to the Complainantís trademark and service mark SUNKIST;

(b) the First Respondent has no rights or legitimate interests in the domain names as the First Respondent has made no use of the domain names for an active site; on the Complainantís information and belief, the First Respondent would have had actual notice of the Complainantís ownership of the name SUNKIST and name SUNKIST GROWERS at the time that the First Respondent registered the domain names; the original administrative and billing contact for the domain names is the listed contact for a number of other domain names containing other famous trademarks; and

(c) the First Respondent registered the domain names in bad faith as the First Respondent provided a fictitious address when registering the domain names; the First Respondentís address and the administrative, billing and contact addresses listed in the WHOIS database for the domain names were changed after the Complainant contacted the First Respondent; the original administrative and billing contact for the domain names is the listed contact for a number of other domain names containing other famous trademarks; when negotiating the sale of the domain names, the First Respondent estimated its expenses at $7,000, a sum which the Complainant contends is obviously not correct since the domain names simply link to a pre-existing unrelated site.

In relation to the Second Respondentís domain name, <sunkistasia.com>, the Complainant contends that:

(a) the domain name is confusingly similar to the Complainantís trademark and service mark SUNKIST and confusingly similar to the Complainantís trade name SUNKIST GROWERS;

(b) the Second Respondent has no rights or legitimate interests in the domain name as the Second Respondent has made no use of the domain name for an active site; on the Complainantís information and belief, the Second Respondent would have had actual notice of the Complainantís ownership of the name SUNKIST and name SUNKIST GROWERS at the time that the Second Respondent registered the domain name; and

(c) the Second Respondent registered the domain name in bad faith as the Second Respondent provided a fictitious address when registering the domain name; the administrative and billing contact for the domain name is the listed contact for a number of other domain names containing other famous trademarks; the domain name has never resolved to an active website.

B. Respondent

The Respondents failed to file a Response within the time limit set by the Center.

In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

The first issue is whether the Complainant correctly instituted a single administrative proceeding under the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") in relation to the three domain names.

Paragraph 3(c) of the ICANN Rules provides that "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder".

The Complainant contends that the First Respondent and the Second Respondent are one and the same entity. The Complainant observed that the contact details and domain name servers contained in the WHOIS database for <sunkistasia.com> are practically identical to the WHOIS information provided when the First Respondent registered the domain names <sunkistgrowers.net> and <sunkistgrowers.org>. The addresses of the registrants, the administrative, billing and technical contacts, the telephone numbers and the domain name servers were identical. The original administrative and billing contact for <sunkistgrowers.net> and <sunkistgrowers.org>, Sean Bay, remains the administrative and billing contact for the domain name <sunkistasia.com>.

In this case, the panel is satisfied that Complainant is able to institute a single administrative proceeding under the ICANN Policy. The panel finds that the Complainant has provided sufficient evidence to indicate that the First and Second Respondents are the same entity. See Adobe Systems Incorporated v. Domain OZ WIPO Case No. D2000-0057; Yahoo!, Inc. v. Somsak Sooksripanich and Others WIPO Case No. D2000-1461.

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:

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

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

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trademark or service mark

The panel finds that the Complainant is the owner of the registered trademark SUNKIST and a number of other registered trademarks containing the word SUNKIST. The panel finds that the Complainant is also the owner of the common law trademark SUNKIST GROWERS through the Complainantís substantial use of the mark throughout the world.

The panel finds that the domain names <sunkistgrowers.net> and <sunkistgrowers.org> are identical to the Complainantís trade name and common law trademark SUNKIST GROWERS and are confusingly similar to the Complainantís registered trademarks listed above.

The panel finds that the domain name <sunkistasia.com> is confusingly similar to the Complainantís trademark SUNKIST. The addition of the name of a place to a trademark, such as the addition of the word "Asia" to "Sunkist", is a common method for specifying the location of business services provided under the trademark. The addition of a geographical location to a trademark does not prevent the domain name from being confusingly similar to the trademark: America Online, Inc. v. Asian On-Line This Domain For Sale Case No. FA0004000094636; The Prudential Insurance Company of America v. J. J. Corp Case No. FA0008000095509; America Online, Inc. v. Dolphin@Heart WIPO Case No. D2000-0713; Texaco, Inc. v. Texaco Domain Canada Case No. FA0005000094869; Rolls-Royce PLC v. Hallofpain WIPO Case No. D2000-1709.

6.2 Illegitimacy

The panel finds that the Respondents have no rights or legitimate interests in respect of the contested domain names as:

(a) there is no evidence of the Respondentsí use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

(b) the Respondents have not been commonly known by the domain names;

(c) the Respondents are not making a legitimate noncommercial or fair use of the domain names; and

(d) the Respondents undertook to register the domain names with full and complete knowledge of the Complainantís superior and prior rights.

It is highly unlikely that the Respondents were unaware of the Complainantís well-known trademark, but the panel does not need to decide this dispute on that basis.

The Respondents had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantís rights. The Respondents chose not to do so. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

Paragraph 14 of the ICANN Rules provides that:

"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."

The words SUNKIST, SUNKIST GROWERS or SUNKIST ASIA do not form any part of the Respondentsí names and the Respondents have not provided the panel with any evidence that they are using or making preparations to use the contested domain names in connection with a bona fide offering of goods or services.

Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondentsí legitimate rights in the contested domain names. The Respondents do not meet any of the three elements set out in this paragraph.

Accordingly, the panel finds that the Respondents have no rights or legitimate interests in respect of the domain names.

6.3 Bad Faith

The Complainant provided evidence that the Complainantís attorney contacted the First Respondent on February 23, 2001 and advised the First Respondent that it would like to purchase the domain names <sunkistgrowers.net> and <sunkistgrowers.org>. The Complainant offered to pay the First Respondentís out-of-pocket expenses involved with the registration of the domain name to date. The First Respondent responded to the Complainantís attorneyís emails on February 25, 2001 and February 26, 2001. The First Respondent stated that it would need to estimate its costs and get back to the Complainantís attorney. On March 6, 2001, the First Respondent advised the Complainant that the First Respondent had spent over $7,000 in relation to the <sunkistgrowers.net> and <sunkistgrowers.org> domain names. A sum which the Complainant contends is obviously not correct as the First Respondent had not created a website at that time, but merely linked its domain names to a pre-existing, unrelated website.

At the time that the Complainant initially contacted the First Respondent, the First Respondent maintained that it was located at Melrose Avenue, Denber, Colorado 90038, U.S.A. This is the same address found in the WHOIS database for the Second Respondent. The Complainant hired a private investigator to investigate the First Respondent. The private investigatorís report shows that the contact details originally provided by the First Respondent were false.

On February 25, 2001, after being contacted by the Complainantís attorney, the information contained in the WHOIS database for <sunkistgrowers.org> and <sunkistgrowers.net> was changed. The First Respondentís address was changed and the administrative, billing and contact addresses were changed. The original email address remains the same.

The original administrative contact and billing contact for <sunkistgrowers.org> and <sunkistgrowers.net> and the current administrative and billing contact for <sunkistasia.com> is Sean Bay. The Complainant provided evidence that Sean Bay is listed as the contact person for a number of other domain names that include famous trademarks of other companies. These included <toshibaamerica.com>; <sonyventure.com>; and <delmonte-asia.com>. The Complainant also provided evidence that Sean Bay was listed as the Registrant of the following domain names: <budweiserkorea.com>; <budweiser-korea.com>; <budweiserasia.com>; <budweiser-asia.com>. Sean Bay is no longer the registrant of these domain names.

The Respondents have deliberately hidden their true identity throughout the process.

Although no single piece of evidence provided by the Complainant on its own is sufficient to establish that the Respondents registered and are using the domain names in bad faith, the panel finds that all the evidence taken together is adequate evidence of registration and use of the domain names in bad faith.

The panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i) and (ii) of the ICANN Policy.

The panel finds that the Complainant has established this element.

 

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain names, <sunkistgrowers.net>, <sunkistgrowers.org> and <sunkistasia.com>, be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: May 22, 2001