WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kraft Foods North America Inc. v. The Pez Kiosk
Case No. D2001-1191
1. The Parties
The Complainant is Kraft Foods North America, Inc, incorporated in the State of Delaware, USA, whose address is Three Lakes Drive, Northfield, IL 60093, USA.
The Respondent is The Pez Kiosk of Muttschellenstrasse 163, Zurich, ZH 8038, Switzerland, a business name given as Registrant of the Domain Name in issue according to the Whois Database search, the Administrative Contact being Patrik Gerber of Feldblumenstrasse 19, CH-8048, Zurich, Switzerland.
2. The Domain Name and Registrar
The Domain Name in issue is <sugus.com>, and is registered with Network Solutions, Inc. of Herndon, Virginia, USA.
3. Procedural History
(1) The Complaint in WIPO Case No. D2001-1191 was filed by e-mail on October 2, 2001, and in hardcopy on October 3, 2001. It was notified to the Respondent on October 9, 2001.
(2) The WIPO Arbitration and Mediation Center has stated that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- the payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a).
- a Response to the Complaint was filed by email on October 24, 2001, and in hardcopy on October 25; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the UDNDRP.
(1) On November 1, 2001, the Complainant submitted a Reply, and on November 13, 2001, a second Supplemental Filing, for consideration by the Panelist if in his discretion he should find it necessary to reaching his decision. These submissions are considered further below.
(2) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(3) The date scheduled for issuance of a decision is November 19, 2001.
(4) No extensions have been granted or orders issued in advance of this decision.
(5) The language of the proceedings is English.
4. Factual Background
(1) The Complainant is the parent corporation of a very large international group of companies in the food and beverage industry operating in more than 140 countries.
(2) In 1990, Kraft acquired Jacobs Suchard, a leading European coffee and confectionery company. In consequence its wholly owned subsidiary, Kraft Foods International, became the registrant of Jacobs Suchard's "SUGUS" marks. These are held in a number of European countries, in Japan, Canada and countries using the International register, in the form either of "SUGUS" alone or "SUGUS" in combination with "Suchard", "Vital" or "Plus", for chocolate, sweets, bakery, sugar and dietetic products and nourishing drinks, etc. The earliest of these registrations were in 1960 and almost all of them predate the registration of the domain name in issue. That the mark has been widely used over that period and to date is not in dispute. The use has been in Europe and elsewhere but not in the USA.
(3) The Respondent, which states its Response through Mr. Gerber, the Administrative Contact, is a business conducted through a website from Switzerland, the aim of which is to provide information to collectors about Pez candy dispensers and Kinder Eggs. It also sells or organises the sale of these articles. The Respondent does not claim any business connection with the Complainant or any of its subsidiaries and accepts that Pez and Kinder Eggs are the products of competitors of the Complainant.
(4) The record for the domain name in issue was created on September 28, 1998, by Mr. Gerber, who was then living in New York.
5. Parties’ Contentions
In order to satisfy the requirements of the UDNDRP, the Complainant asserts the following:
(1) Thanks to its acquisition and use of the "SUGUS" marks, the Complainant and its corporate group have established it as a famous mark. This reputation is protected by the extensive trade mark registrations indicated above.
(2) The domain name in issue is identical to the Complainant's group's mark.
(3) The Respondent is located in Switzerland and has no connection with the Complainant's group. On its website, promoting its business in collectible Pez dispensers and Kinder Eggs, it nevertheless displays the word "SUGUS" prominently in conjunction with "the pez and kinder eggs store".
(4) The Respondent has no right or legitimate interest to do this, since it has no licence or permission to use the Complainant's mark or to sell its products; yet it is using the mark in order to attract Internet users to purchase the competitive products in which it does business.
(5) The Respondent's domain name registration and use of "SUGUS" was and remains in bad faith in that :
(i) the fame of the mark meant that Mr. Gerber must actually have known of it before registering the domain, and he must have had constructive notice of it from the Complainant's trade mark registrations;
(ii) the positioning of "SUGUS" on the Respondent's website suggests that the Complainant group is the author or sponsor of the site;
(iii) that website use is designed to attract customers away from the Complainant group and towards competitors; and
(iv) Patrik Gerber signed the receipt for a certified mail letter from the Complainant, sent on September 7, 1999, calling on him to cease the website use of "SUGUS" and he failed to respond to that letter.
(1) For the Respondent, Mr. Gerber claims that he was entitled to register the domain name, <sugus.com>, because he was then living in New York and "SUGUS" was unknown as the Complainant's trade mark in the USA.
(2) No response to the Complainant's letter of September 7, 1999, was called for since Network Solutions Inc. notified Mr. Gerber on December 22, 1991, that its internal domain dispute procedure had been terminated in favour of the forthcoming ICANN dispute settlement procedure under which the present case arises.
(3) Mr. Gerber's nickname, by which he is known to close personal friends and to the Pez collectors' community, is "SUGUS", a name he acquired when a Boy Scout. This fact, together with the Complainant's lack of interest in the name, apparent from its failure to register the relevant domain name, establishes that he had a legitimate interest in securing it for himself.
(4) Neither his acquisition nor his use of the domain name has been in bad faith, since it does not mislead a visitor to the website to believe that it is owned by or affiliated to the Complainant. Instead it is clearly a non-commercial site for collectors of products unassociated with the Complainant. Since most of these collectors reside in the USA and the Complainant's mark is unknown in that country, there is no likelihood of confusion as to source. Mr. Gerber, moreover, runs the site as a hobby and not to make commercial gains.
6. Grounds for Decision
(1) The Complainant has sought to underpin its initial Complaint by filing replies which deny the validity of the Response and give further details of the relationship between corporations in its group. Given the summary nature of the Dispute Resolution procedure, there must always be sufficient reason for taking account of such supplementary submissions, and in this case I do not find it necessary to admit or take account of the matter contained in them. The corporate arrangements for the holding of the various "SUGUS" registered trade marks is sufficiently indicated in the Complaint itself, and this has not been put in issue in the Response. The weight to be attached to the assertions in the Response can be adequately estimated from that document, together with the printouts from the Respondent's website annexed to the Complaint.
(2) Under the UDNDRP, no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a). The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the complainant has rights. There is identity between the substantive portion of the domain name in issue and some at least of the Complainant's registered marks. The large number of trade mark registrations and the undisputed reputation of the mark for products of the Complainant's group establish that the Complainant has the rights which it claims. The first requirement upon it is accordingly made out.
(3) As to the second element in the Complaint, the Respondent's principal explanation of its choice of its domain name is its relation to Mr. Gerber's nickname. Even assuming that this is indeed the familiar name by which many friends and collectors know him, it is noteworthy that the way in which "SUGUS" is used most prominently on his website in no way points to this personal connection. Those who know or know of Mr. Gerber and his hobby may understand the word as his nickname, but they are not the only visitors to be expected at his website, any more than it is the likely case that visitors will only be US residents who have no acquaintance with the Complainant's products marketed under that mark. Mr. Gerber, as a person resident in Switzerland, does not deny knowledge of the Complainant’s group's mark. In the light of his hobby, he could scarcely do so. His claim that he had a legitimate interest in holding the domain name which he registered must therefore be rejected.
(4) As to whether the domain name was acquired and used in bad faith, the main accusation in the Complainant's case concerns the prominence given on the Respondent's webpage to "SUGUS". Since the domain name is inherently likely to attract those from countries where it is well-known as a mark for confectionery and the like, this usage on the website must be taken as intended to sustain a belief that there is a commercial connection with the Complainant. I find this explanation of the Respondent's use of "SUGUS" so highly probable that the presence of bad faith, both at the initial registration and in subsequent use, is established beyond doubt. In reaching this view, I find it unnecessary to take into account of the allegation concerning the Complainant's letter to the Respondent of September 7, 1999 and I do not do so.
For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, that the domain name <sugus.com> should be transferred forthwith to the Complainant.
William R. Cornish
Dated: November 18, 2001