WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sunkist Growers, Inc. v. SunkistJapan.com

Case No. D2001-0737

 

1. The Parties

The Complainant is Sunkist Growers, Inc., 720 E. Sunkist Street, Ontario, California 91761-0993, United States of America.

The Respondent is SunkistJapan.com, Minami-Nagasaki, Tokyo, Japan.

 

2. The Domain Name and Registrar

The domain name in issue is <sunkistjapan.com> (hereafter "the domain name").

The domain name was registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.

The domain name was registered on or about April 25, 2001.

 

3. Procedural History

(1) The Complaint in Case No. D2001-0737 was filed in email form on June 2, 2001, and in hardcopy form on June 5, 2001. The Complaint failed to include the statement required by Rules 2(a) and 3(b)(xii) of the Rules for Uniform Domain Name Dispute Resolution Policy. On June 12, 2001, the Complainant filed an Amended Complaint with the Center, and served the amended Complaint upon all parties including the affected Registrar. The amended Complaint included the required statement pursuant to the Rules.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No formal Response was filed;

- The Respondent was appropriately notified of default;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The expected date of decision in this proceeding was August 3, 2001. Due to technical difficulties, the Panelist reset the date of decision to August 12, 2001.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

The 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. The 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 the Complainant.

The Complainant is the owner of 53 U.S. trademark and service mark registrations for the term SUNKIST either alone and/or in combination with other words and/or designs. The Complainant owns trademark and service mark applications and registrations for the term SUNKIST either alone and/or in combination with other words and/or designs in over 150 countries, including 34 registrations and applications in Japan for the word mark SUNKIST alone. The Complainant markets its products throughout the world and always uses its trade name SUNKIST GROWERS in such promotion.

B. The Respondent

The Respondent has not filed a Response. According to NSIís Whois database, the Respondent in this administrative proceeding is as provided above, of the above address. There is evidence that the address is a false one, since it provides insufficient information under the Japanese postal system for correct addressing, and since documents sent to the Respondent have been returned as unable to be delivered. No other information is known about the Respondent.

C. The Domain Name

The domain name resolves to a placeholder site provided by a domain name and web hosting company.

 

5. Partiesí Contentions

A. The Complainantsí assertions

The Complainant submits that the Respondent's domain name is identical or confusingly similar to the Complainantís marks, for the following reasons:

- Respondentís domain name <sunkistjapan.com> is identical to and confusingly similar to Complainantís trademark and service mark SUNKIST as well as confusingly similar to Complainantís trade name SUNKIST GROWERS. See Sunkist Growers, Inc. v. S G and Delmonte-Asia.com, WIPO Case No. D2001-0432 (finding <sunkistasia.com> confusingly similar to SUNKIST - "[t]he addition of a geographical location to a trademark does not prevent the domain name from being confusingly similar to the trademark").

The Complainant submits that the Respondent has no legitimate interest or rights in the domain name, for the following reasons:

- Respondent has no rights or legitimate interest in the domain name <sunkistjapan.com> based on Complainantís continuous and exclusive use of SUNKIST as a trademark, service mark and domain name in the United States and abroad, and of SUNKIST GROWERS as a trade name and domain name in the United States and abroad.

The Complainant submits that the Respondent has registered and is using the domain name in bad faith, for the following reasons:

- At the time Respondent registered <sunkistjapan.com> with Network Solutions, Inc., it was, on information and belief, on actual notice of Complainantís ownership of the mark SUNKIST and name SUNKIST GROWERS. Due to Complainantís prior registration of <sunkist.com> and dozens of other sunkist domain names, it was clear that Complainant had a prior and legitimate interest in sunkist as a domain name. Therefore, Respondent was, on information and belief, on actual notice of Complainantís rights in the sunkist domain at the time Respondent registered <sunkistjapan.com>.

- Respondent maintains that it is located at Minami-Nagasaki, Tokyo, Japan. Although the location specified in this address is legitimate, it is an incomplete address. Mail sent to Respondentís address could not be delivered. There is not enough information provided to permit proper mail delivery. This is clear evidence of bad faith, in direct violation of NSI rules. See NSI Service Agreement ∂∂ 5, 17, and 19.

- As further evidence of Respondentís bad faith, it is not using <sunkistjapan.com> for legitimate purposes. Respondent is merely parking on the domain name <sunkistjapan.com>.

- On May 16, 2001, Complainantís attorney contacted Registrant by e-mail and advised Registrant of Complainantís rights in the trademark SUNKIST. Complainantís attorney further demanded that Registrant assign the domain name <sunkistjapan.com> to Complainant. Complainant offered to reimburse Respondent for its registration fee and any fees associated with the transfer of the <sunkistjapan.com> domain name. Complaintís attorney contacted Respondent again on May 22, 2001. Respondent has failed to respond to either of the said e-mails.

- Respondent registered the domain name <sunkistjapan.com> with what appears to have been actual knowledge of Complainantís rights therein; Respondent is not using the domain name for legitimate purposes. On information and belief, the acts herein alleged have been committed with the intent and purpose of creating a likelihood of confusion and appropriating and trading upon Complainantís considerable goodwill and reputation in its SUNKIST marks and SUNKIST GROWERS name, and further with the intent and purpose of profiting from sale of Complainantís mark and name to Complainant or others.

Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.

B. The Respondentís assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. of the Policy requires the Complainant to make out three elements:

a). The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

b). The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

c). The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its "Sunkist" marks in the US, and elsewhere. I conclude that the Complainant Ė as registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly similar to the marks. I conclude that the domain name is confusingly similar to the Complainantís marks. The addition of a geographical appellation to the Complainantís mark does not remove any confusion in the mind of the consumer. It will simply lead the consumer to assume that this domain name is for the Complainantís well-known mark within the geographical region of Japan. I am happy to be following the reasoning in the closely-related case of Sunkist Growers, Inc. v. S G and Delmonte-Asia.com, WIPO Case No. D2001-0432. The domain name in issue there was <sunkistasia.com> and the conclusion of the panelist was that "[t]he addition of a geographical location to a trademark does not prevent the domain name from being confusingly similar to the trademark." I agree.

The Complainant has shown that it has rights in trademarks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. Itís main basis for so claiming is that the Complainant has used the mark exclusively for a significant period of years. This is a strong basis for the claim, and one that clearly weighs heavily in the Complainantís favour.

In addition to this, however, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:

"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. The Complainantís marks are extremely well-known throughout the world, and it has registrations in over 150 countries. It is unlikely that someone could establish a legitimate interest in any name that included the words "sunkist." Though the principle may not apply to all decisions, where we have a well-known mark such as this, the burden is clearly upon the Respondent to establish its legitimate interest. The Respondent has not met its burden.

As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

This is one of those cases where the Respondent has done nothing other than register the name. The issue then is whether passive use constitutes bad faith registration and use. I conclude, following Telstra, Ltd. v.Nuclear Marshmallows, WIPO Case No. D2000-0003, that it is. The same sorts of factors that lead the Telstra Panel to conclude bad faith in that case exist in this case also. Most notably, there is the extensive international brand recognition of the Complainantís marks, and the evidence that the Respondent has falsified its contact information. In the circumstances I feel justified in concluding that the Respondent has acted in bad faith pursuant to the requirements of paragraph 4.a.(iii).

I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <sunkistjapan.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: August 12, 2001