WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins

Case No. D2001-0865

 

1. The Parties

Complainants are Brown & Williamson Tobacco Corporation ("B&W"), a Delaware corporation, whose principal place of business is located at 200 Brown & Williamson Tower, 401 S. Fourth Avenue, Louisville, Kentucky 40202, USA, and British American Tobacco (Brands) Inc. ("BATBI"), a Delaware corporation, whose principal place of business is located at 401 S. Fourth Avenue, Suite 1800, Louisville, Kentucky 40202, USA. Both companies are wholly-owned subsidiaries of the London-based British American Tobacco p.l.c. ("BAT"). These entities will be collectively referred to as "Complainants."

Respondent is Dennis Wilkins, an individual ("Respondent" or "Wilkins"), whose address is 8518 Big Springs Court, Sellersburg, Indiana 47172 USA.

 

2. The Domain Names and Registrar

The domain names at issue are <itstoasted.com> and <koolnatural.com> (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On July 7, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint from Complainants via email. On July 10, 2001, the Center received hardcopy of the Complaint. On July 11, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainants. The Complainants paid the required fee.

On July 12, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On July 16, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainants. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On August 2, 2001, the Center received the Response of Respondent via email and notified Respondent of deficiencies in the Response. Respondent responded to the deficiency notice. On August 6, 2001, the Center received the Response from Respondent in hardcopy.

On August 21, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

B&W is the owner of the trademarks "ITíS TOASTED", "KOOL" and "KOOL NATURAL", among others, for use in connection with cigarettes and tobacco products in the United States, and BATBI is the owner of the same marks in most other countries of the world. Complainants have numerous trademark registrations, common law rights and longstanding use of these marks worldwide.

The trademark "ITíS TOASTED" is used in conjunction with the LUCKY STRIKE brand of cigarettes and tobacco products. The LUCKY STRIKE trademark has been in use by B&W and its predecessors in the United States since at least as early as 1871. The trademark "ITíS TOASTED" has been in use by B&W and its predecessors in the United States in connection with cigarettes and tobacco products since at least as early as 1917.

B&W is the owner of the trademarks "LUCKY STRIKE ITíS TOASTED and design" and "LUCKY STRIKE ITíS TOASTED LUCKIES AN AMERICAN ORIGINAL FILTERS and design" as registered with the United States Patent and Trademark Office (Reg. Nos. 2,384,760 and 2,174,493, respectively). Of particular import, with respect to these two United States trademark registrations, the phrase "ITíS TOASTED" is registered pursuant to Section 2(f) of the Lanham Act [15 U.S.C. ß1052(f)] on the basis that the mark has become distinctive of B&Wís goods in commerce. Therefore, B&W has demonstrated that the primary significance of the mark "ITíS TOASTED" is not the product, but the producer or source of the product, namely, B&W. Each of these trademarks was in use by B&W prior to the date the Respondent registered the Domain Name <itstoasted.com>.

Outside of the United States, BATBI owns 648 registrations, which incorporate the mark "ITíS TOASTED" in relation to the LUCKY STRIKE brand of cigarettes. Furthermore, BATBI has another 61 applications pending worldwide to register the mark "ITíS TOASTED" in relation to the LUCKY STRIKE brand. The overwhelming majority of these trademark applications were filed and/or registered long before the Respondent registered the Domain Name <itstoased.com>.

The trademark "KOOL" has been used by B&W in the United States since at least November 20, 1931, in connection with cigarettes and tobacco products. B&W has used the trademark "KOOL NATURAL" in conjunction with the KOOL brand of cigarettes and tobacco products since at least 1998. B&W owns at least eight (8) registrations for the trademark "KOOL" in the United States Patent and Trademark Office

These include:

KOOL (word only form)

Reg. No. 747,482

KOOL (stylized form)

Reg. No. 508,538

KOOL (stylized form)

Reg. No. 747,490

KOOL (stylized form)

Reg. No. 2,218,589

KOOL and design

Reg. No. 1,714,026

KOOL and design

Reg. No. 2,284,813

KOOL and design

Reg. No. 2,309,865

KOOL and design

Reg. No. 2,340,349

Additionally, BATBI owns 40 registrations worldwide for the trademark "KOOL NATURAL" (in either design or "word only" form) for use in connection with cigarettes. Furthermore, BATBI has another 24 applications to register this trademark pending worldwide. Of particular import, 59 of the 64 applications to register the trademark "KOOL NATURAL" (40 of which have now matured to registration) were filed prior to the date the Registrant registered the Domain Name <koolnatural.com>.

B&W is the third largest manufacturer and marketer of cigarettes and tobacco products in the United States, and BAT is the second largest manufacturer worldwide. With headquarters in Louisville, Kentucky, B&W employs approximately 5,000 employees worldwide.

Complainantsí spend millions of dollars each year to promote the "ITíS TOASTED", "KOOL" and "KOOL NATURAL" trademarks, which have achieved widespread recognition from the trade and purchasing public worldwide. Last year, in the United States alone, B&W spent over $15 million dollars in advertising for the LUCKY STRIKE brand, which incorporates the trademark "ITíS TOASTED", and over $30 million in advertising for the trademarks "KOOL" and "KOOL NATURAL".

The Respondent began working for B&W on August 16, 1993, in the Information Technology Department located at the companyís headquarters in Louisville, Kentucky. He was subsequently terminated on December 7, 2000, as part of a company wide reduction in workforce. At that time, the Respondent was working as Senior Systems Engineer in the Systems Technology Division of the Information Technology Department. During the last three years of his employment with B&W, the Respondent worked in conjunction with the Consumer Information Department, in which he was intimately involved in consumer marketing and brand awareness. Through his employment with B&W, the Respondent was well aware of the significance of the trademarks at issue, as well as Complainants ownership of same.

In May 2001, B&W became aware of the fact that the Respondent had registered the Domain Names <itstoasted.com> and <koolnatural.com> on April 19, 1999, in his own name, for his own personal use, without permission or authorization from B&W or BATBI. At the time the Complainants learned this information, the Respondentís brother, Gregory Wilkins, was employed by B&W as a Senior Systems Engineer for Web Development in the Marketing Division of the Information Technology Department. Upon information and belief, B&W states that when Gregory Wilkins learned that B&W knew that the Respondent had previously registered the two Domain Names, he contacted the Respondent and instructed him to renew the domain name registrations so they would not expire. Gregory Wilkins was terminated on May 22, 2001, for disclosing confidential corporate information in violation of his Employee Agreement executed on June 29, 1992, and company policy.

On June 22, 2001, B&W, by counsel, sent the Respondent a cease and desist letter demanding that he immediately transfer the domain name registrations to B&W, and requesting a written response by June 29, 2001. At the time the cease and desist was sent, neither website was operational; instead, each website displayed the notice that the site was "under construction".

On June 27, 2001, the undersigned received a letter from William C. Willock, Jr., Esq., dated June 26, 2001, which stated that he had been retained by the Respondent, but requested additional time to respond, since he (Mr. Willock) would be out of town until July 12, 2001. At the close of this correspondence, Mr. Willock stated: "You can be assured, however, that both I and Mr. Wilkins take Brown & Williamsonís position on this matter very seriously, and that we will make every effort to respond at the earliest possible date".

Despite this assurance, the very next day, B&W learned that the Respondent had posted content on each of the websites. Upon learning of the Respondentís contemptuous conduct, Complainants chose not to extend the deadline for response.

The www.itstoasted.com website is now "dedicated to the art of making toast" and invites users to send in recipes for toast. The site also contains a link to the "Toast Dictionary", which depicts illustrations of "standard toast", "decorative toast" and "novelty toast". The "Toast Dictionary" appears to be maintained by an entity located in Australia, as the "Toast Homepage" depicts the URL "http://members.ozemail.com.au". This site has not been updated since December 29, 1995, and there does not appear to be any relationship between this entity and the Respondent.

The www.koolnatural.com website now claims to be "about Natures way of staying ĎKoolí", and contains links to The Journal of Thermal Biology (maintained by www.elsevier.com) and The Rainforest Conservation Portal (maintained by www.forests.org), neither of which appear to have any relationship with the Respondent.

 

5. Partiesí Contentions

A. Complainantsí contentions

i. Complainants contend that they have registrations of the ITíS TOASTED, KOOL and KOOL NATURAL trademarks. In addition to the actual trademark registrations and applications identified above, Complainants also rely upon and assert against the Respondent, all common law rights they have developed in the trademarks worldwide.

ii. Complainants argue that the Domain Names are confusingly similar to the trademarks, pursuant to Paragraph 4(a)(i) of the Policy, because each of the Domain Names wholly incorporates one of the trademarks

As a result, the Domain Names are likely to either result in confusion as to the affiliation and endorsement of the Respondentís sites or confuse the public as to the official location of B&Wís own website.

Based upon the foregoing, Complainants argue that the Domain Names registered by the Respondent are identical with or confusingly similar to trademarks in which they have rights pursuant to Paragraph 4(a)(i) of the UDRP. Sony Kabushiki Kaisha v. Inja, Kil (WIPO Case No. D2000-1409); Parfums Christian Dior v. 1Network, Inc. (WIPO Case No. D2000-0022); and Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003).

iii. Complainants contend that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

The Respondent was not authorized to register either domain name as part of and during his employment with B&W, and has no license or other legal claim to use Complainantsí trademarks. The Respondent never used either of the Domain Names in connection with a bona fide offering of goods or services prior to receiving notice of this domain name dispute. Furthermore, the Respondent was never commonly known by either of the Domain Names prior to this dispute. The Respondent only knew of the significance of these trademarks by virtue of his employment with B&W, and it is inconceivable that he did not have knowledge of Complainantsí rights in these trademarks when he registered the Domain Names. Therefore, the Respondent could never make any active use of the disputed domain names without creating a false impression of association with B&W. Sony Kabushiki Kaisha v. Inja, Kil, supra.

Moreover, it cannot be said that the Respondent is making legitimate noncommercial or fair use of the Domain Names. Although what might loosely be defined as content is now posted on or linked to the websites in dispute, any "use" the Respondent may be making of same is not bona fide, fair or legitimate. SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF Case No. FA0094956). The information currently displayed on the <www.itstoasted.com> website is particularly insulting and best exemplifies Respondentís bad faith. "Fair use" allows use of anotherís trademark for informational or descriptive purposes only: It does not allow use of anotherís trademark as a domain name to entice Internet users to its website. "This is not fair use but instead infringing use." Chanel, Inc. v. Estco Technology Group (WIPO Case No. D2000-0413).

iv. Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

The four "bad faith" factors listed in Paragraph 4(b) of the UDRP are nonexclusive and the decisions interpreting the UDRP illustrate that the presence of "bad faith" depends upon the totality of circumstances of each particular case. Twentieth Century Fox Film Corporation v. David A. Risser (NAF Case No. FA0093761); and Telstra Corporation Limited v. Nuclear Marshmallows, supra. In any event, Complainantsí submit that the facts and circumstances of this case constitute bad faith registration and use of the domain names by any definition.

Complainantsí own over 600 registrations worldwide which incorporate the trademark "ITíS TOASTED", and B&W has been using this mark in the United States since at least as early as 1917. B&W owns at least eight (8) registrations for the trademark "KOOL" (by itself) in the United States, with use of this mark in the United States dating back to 1931. Furthermore, BATBI owns 40 registrations for the trademark "KOOL NATURAL" worldwide, with another 24 applications pending. Each of these three marks was in use by Complainants prior to the date the Respondent registered the Domain Names and the Respondent was fully aware of the Complainantsí rights in said marks at the time he registered the Domain Names.

In the present situation, the Respondent, a former B&W employee who was fully aware of Complainantsí trademark rights, registered the Domain Names during his employment with B&W, without authorization from Complainants and in breach of the fiduciary duty owed his employer. When tipped off by his brother in May 2001 that B&W knew the Respondent had registered the Domain Names, the Respondent renewed the Domain Names to prevent B&W from obtaining those registrations. Within days of receiving of receiving the cease and desist letter, the Respondent posted material on each of the websites in derogation of Complainantsí trademark rights. Such conduct clearly demonstrates the Respondentís bad faith registration and use of the Domain Names in dispute. Twentieth Century Fox v Risser, supra; Sony Kabushiki Kaisha v. Inja, Kil, supra; and Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The Respondent only knew of the significance of the Domain Names by virtue of his employment with B&W. He was never commonly known by either of these marks, nor did he make any bona fide offering of goods and services, prior to this domain name dispute. Whatever "use" the Respondent began making of the Domain Names after he received the cease and desist letter from B&W is certainly not legitimate. If anything, this action simply underscores the Respondentís bad faith intent to disrupt the Complainantsí business and/or tarnish the goodwill the Complainants have established in the marks over the course of many years and at great expense.

The act of placing such trivial and insulting material on this website within days of receiving the cease and desist letter clearly demonstrates the Respondentís intent to harass the Complainants and disparage their trademark rights.

Although rainforest conservation may be a worthy cause in the proper context, given the timing of the Respondentís actions and the circumstances in which this Domain Name was registered and renewed, there is no justifiable explanation for the Respondentís conduct other than to likewise harass the Complainants and disparage their trademark rights.

Under the circumstances, it is impossible to conceive of any plausible situation in which the Respondent could use either domain name that would not be illegitimate, such as either "passing off" (unfair competition), trademark infringement, or trademark dilution. As a result, there can be no justification for the Respondentís registration of the Domain Names other than to try to sell the registrations to B&W; or to disrupt B&Wís business operations; or to divert consumers from B&Wís authentic website by creating a likelihood of confusion. These actions constitute bad faith under sections (i), (iii) and (iv) of Paragraph 4 of the UDRP, respectively. Volvo Trademark Holding AB v. Cup International Limited (WIPO Case No. D2000-0338); Sony Kabushiki Kaisha v. Inja, Kil, supra; and Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Lastly, the Respondentís actions also constitute bad faith under Paragraph 4(b)(ii) of the UDRP. The Respondent registered not one, but two, of Complainantsí most well-known trademarks as domain names and thereafter renewed the registrations in 2001 strictly for the purpose of preventing B&W from obtaining the Domain Names. While in other situations, registration of two domain names may not constitute a "pattern of conduct," the circumstances of this case certainly justify a finding that the Respondentís multiple registrations are "bad faith" as defined by the UDRP. Volvo Trademark Holding AB v. Cup International Limited, supra.

B. Respondentís contentions

i. Respondent disputes Complainantsí claims that they have trademark rights in ITíS TOASTED or in KOOL NATURAL. Respondent argues that the United States trademark registrations are for LUCKY STRIKE ITíS TOASTED and for KOOL.

ii. Respondent does not contest that the Domain Names are identical with or confusingly similar to the trademarks.

iii. Respondent asserts that he has rights to or legitimate interests in the Domain Names because he registered the Domain Names two years ago and heard nothing from Complainants. The content on the websites regarding "toasting," "thermo dynamics" and "thermo biology" does not conflict with the business of Complainants. Respondent complains that global corporations are trying to destroy the rights of individuals by controlling the real estate of the Internet.

iv. Respondent denies that he registered or used the Domain Names in bad faith. Respondent argues that Complainants were remiss in not registering the Domain Names themselves and that he has done nothing to disparage Complainants.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panel as to the principles he is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Because both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainants have met their burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that 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) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainants assert trademark rights in ITíS TOASTED based upon registrations of LUCKY STRIKE ITíS TOASTED. In addition to its registrations, Complainants assert common law trademark rights.

Even without registration of the precise phrase ITíS TOASTED, Complainants are entitled to common law trademark protection if they can show that the mark has acquired a secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. Broadway Trading, LLC v. Gene Weissman, NAF Case No. FA 0094310; 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223.

Given the extensive use by Complainants of the phrase "itís toasted" in conjunction with the mark LUCKY STRIKE, Complainants have made a sufficient showing of common law trademark.

Respondent admits that Complainants have numerous registrations of KOOL NATURAL outside of the United States. In addition to the rights in registered trademarks, Complainants assert all common law trademark rights, which arise from the usage of the phrase "kool natural" in the United States.

Given the extensive use by Complainants of the phrase "kool natural" in the United States and internationally, Complainants have made a sufficient showing of common law trademark.

Respondent apparently argues that the marks ITíS TOASTED and KOOL NATURAL are descriptive or generic and therefore not subject to protection as trademarks.

The question as to whether a mark is or has become generic or is descriptive such that the Complainants should not be seen to have "rights" in respect of the mark has been presented to a number of panels. The Sole Panelist believes that the courts or regulatory authorities are better able to grapple with the question of the generic or descriptive nature of words and phrases, especially when used as part of registered trademarks. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223. Nevertheless, the Sole Panelist finds that the evidence presented by Respondent is insufficient to conclude that the marks ITíS TOASTED and KOOL NATURAL cannot enjoy registered or common law trademark protection because they are generic or descriptive.

Identity or Confusing Similarity

Complainants further contend that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complainants that the Domain Names are identical with or confusingly similar to the trademark.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical with or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.

The Sole Panelist notes that the entirety of the trademarks ITíS TOASTED or KOOL NATURAL is included in the Domain Names.

Therefore, the Sole Panelist finds that the Domain Names are identical with and confusingly similar to the ITíS TOASTED and KOOL NATURAL trademarks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainants contend that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Respondent has no relationship with or permission from Complainants for the use of the ITíS TOASTED or KOOL NATURAL trademarks.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Complainants have alleged that the Respondent never used either of the marks in connection with a bona fide offering of goods or services prior to receiving notice of this domain name dispute. Furthermore, the Respondent was never commonly known by either of the Domain Names prior to this dispute. The Respondent only knew of the significance of these trademarks by virtue of his employment with B&W, and it is inconceivable that he did not have knowledge of Complainantsí rights in these trademarks when he registered the Domain Names.

Complainants further allege the Respondent is not making legitimate noncommercial or fair use of the disputed domain names, because any "use" the Respondent may be making of same is not bona fide, fair or legitimate. SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF Case No.FA0094956).

The Complainants have made a sufficient showing to require Respondent to rebut the showing.

Respondent has not posted any content on the <itstoasted.com> and <koolnatural.com> websites until after the dispute arose. Nor has Respondent shown any legitimate noncommercial or fair use of the Domain Names.

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product

Complainants argue that Respondent has acted in a fashion to establish all four criteria under the Policy paragraph 4(b). In addition, Complainant argues that the evidence supports a finding of bad faith because of the totality of the circumstances surrounding the dispute between the parties.

The Sole Panelist finds that Complainants have not established any of the criteria under the Policy paragraphs 4(b)(i)-(iv).

Complainants allege that the Respondent has registered the Domain Names primarily for the purpose of disrupting Complainantsí business, harassing Complainants and/or to keep Complainants from registering the Domain Names.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Inaction or Lack of Use.

One such factor is that Respondent has made no use of the Domain Names. Complainants allege that Respondent has not developed any active website at www.itstoasted.com and www.koolnatural.com or made any other use of the Domain Names. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In Telstra, it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.

See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, NAF Case No. FA 0094970; Revlon Consumer Prods. Corp. v. Yosef, WIPO Case No. D2000-0468 (citing cases where panel found inaction constitutes bad faith).

In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290, the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D2000-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business"); Casual Corner Group, Inc. v. Neil Young, NAF Case No. FA0095112; Emory Healthcare, Inc. v. Gulf South Limited, NAF Case No. FA0094892.

Actual Knowledge

A second factor found to support a finding of bad faith is Respondentís knowledge of the Complainantsí marks when Respondent registered the Domain Names. Complainants have alleged, without refutation, that Respondent had actual knowledge of the trademarks due to his employment by Complainants.

Use of Entire Mark Without Plausible Good Faith Use

A third factor is the use of Complainantsí entire mark in the Domain Names, thus making it difficult to infer a legitimate use of the Domain Names by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, complainant filed a WIPO complaint against the registrant of the domain name <cellularonechina.com>. The WIPO panel agreed with complainant that the registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the panel inferred bad faith use of <cellularonechina.com>, because the domain name included complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7.

Respondentís Domain Names use the entirety of Complainantsí trademarks. No plausible explanation exists as to why Respondent selected the names ITíS TOASTED and KOOL NATURAL as part of the Domain Names other than to disrupt the trade of Complainants, to harass Complainants and to keep them from registering the Domain Names. In addition, the registration of the Domain Names occurred during a time period when the Respondent and his brother were employed by Complainants, which supports a conclusion that the registrations were without bona fide purpose.

The evidence establishes: (i) inaction by Respondent in the use the Domain Names to post any content on the Internet or for any other legitimate purpose; (ii) actual knowledge by Respondent of Complainantsí rights in the ITíS TOASTED and KOOL NATURAL trademarks upon the registration of the Domain Names; and (iii) the use of Complainantsí entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith.

Based upon this evidence, the Sole Panelist finds that Complainants have shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names <itstoasted.com> and <koolnatural.com> are identical with Complainantsí registered and common law trademarks ITíS TOASTED and KOOL NATURAL, (b) that Respondent has no rights or legitimate interests in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Complainants.

 


 

Richard W. Page
Sole Panelist

Dated: September 3, 2001