WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunkist Growers, Inc. v. May Fung
Case No. D2002-0411
1. The Parties
The Complainant in this administrative proceeding is Sunkist Growers, Inc. a corporation organized and existing under the laws of California United States of America. The Respondent in this administrative proceeding is May Fung with an address, in Causeway Bay, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name is < sunkist.biz> (the "Domain Name").. The Registrar of the domain names is Register.com, located at 11th Avenue, New York, United States of America.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the WIPO Arbitration and Mediation Center ("the Center") on April 30, 2002, by email and on May 2, 2002, by hardcopy. The Complainant filed an Amended Complaint with the Center on May 16, 2002, by email and on May 22, 2002, by hardcopy. On May 29, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On June 24, 2002, Notification of Respondent Default was issued.
The Administrative Panel consisting of a single member was appointed on July 16, 2002, by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
Complainantís factual assertions
The Complainant is an agricultural marketing cooperative which represents over 6,000 fruit growers and 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 1907 in connection with the marketing and sale of its fruit. It 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.
The Complainant is the owner of fifty-one United Statesí trademark and service mark registrations for the term SUNKIST either alone or in combination with another word(s), design(s), etc.
The Complainant owns trademark and service mark applications and registrations for the term SUNKIST either alone or in combination with another word(s), design(s), etc. in over 150 countries, including, 32 registrations in Hong Kong for the word mark SUNKIST.
The Complainant markets its products throughout the world and always uses its trade name SUNKIST GROWERS in such promotion. It also has granted approximately 45 license agreements for the use of the SUNKIST trademark in connection with a variety of products in approximately 60 countries.
The Complainant is the owner of the domain names <sunkistgrowers.com>, <sunkistgrowers.ne>t, <sunkistgrowers.org>, <sunkist-members.com>, <sunkist.com>, <sunkist.net>, <sunkist.org>, <sunkist-ppd.com>, <sunkistjapan.net>, and <sunkistjapan.org> and dozens of other domain names for sunkist with country endings throughout the world. Plaintiff operates a web site at <sunkist.com>.
The Complainant has expended hundreds of millions of dollars in advertising, point-of-sale promotions, customer service and research, all in an effort to establish itself as a leader in its industry. It spends millions of dollars annually advertising its products on network television, on national radio, and in national print media. As a result of the Complainantís advertising expenditures, licensing efforts and promotional activities, the SUNKIST trademark has been recognized as one of the most recognized names in the world.
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, its 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 the Complainantís goods and services.
In a May 8, 2001, WIPO decision, the Complainantís SUNKIST mark was found to be "widely known in the United States and throughout the world." Sunkist Growers, Inc. v. New York Project, WIPO Case No. D2001-0433; see Sunkist Growers, Inc. v. S G and Delmonte-Asia.com, WIPO Case No. D2001-0432.
As a result of the care and skill exercised by the Complainant in the conduct of its business, the uniformly high quality of its goods offered under its SUNKIST marks and SUNKIST GROWERS name, the Complainantís SUNKIST marks and SUNKIST GROWERS name have acquired an excellent reputation among the public at large, which recognize SUNKIST and SUNKIST GROWERS as identifying the goods and services of the Complainant exclusively. SUNKIST and SUNKIST GROWERS are extremely valuable symbols of the Complainantís business and goodwill.
The Complainant has been diligent in protecting its SUNKIST marks and name throughout the world.
The Respondent registered the subject domain name on March 27, 2002.
On March 20, 2002, the Complainant filed an UDRP Complaint against the Respondent for the domain name <sunkist.info> with the Center - WIPO Case No. D2002-0217.
The Complainant forwarded this Complaint to the Respondent at her address in Hong Kong by Federal Express. Federal Express returned this mailing to Complainantís attorney and advised that there was no one by that name at this address. Accordingly, it appears that the contact information provided for the <sunkist.info> domain name, which is identical to the contact information provided for the subject domain name, is false and inaccurate in violation of Register.comís Services Agreement
Seven days after the <sunkist.info> Complaint was filed, the Respondent registered the subject domain name. The Respondent clearly was on notice of the Complainantís rights in the trademark SUNKIST and trade name SUNKIST GROWERS.
Upon learning of the Respondentís registration of the subject domain name, on April 17, 2002, the Complainantís attorney contacted the Center Case Manager handling the <sunkist.info> case to inquire whether it would be possible to amend the Complaint for the <sunkist.info> domain name to add the subject domain name. On April 18, 2002, the Case Manager advised that it was not possible to amend the Complaint.
The Complainantís attorney responded to the Center Case Managerís e-mail on April 18, 2002, to advise that the Complainant would file another domain name proceeding against the Respondent for the subject domain name.
The Respondent was copied on all of these exchanges.
On April 21, 2002, the Complainantís attorney contacted the Respondent by e-mail and advised her of the Complainantís rights in the trademark SUNKIST. The attorney further demanded that the Respondent assign the subject domain name to the Complainant and offered to reimburse the Respondent for her registration fees for the subject domain name. The Respondent did not respond.
Subsequent to the initiation of this proceeding, the Decision in WIPO Case No. D2002-0217 was issued. The respondent in that proceeding is the Respondent in this proceeding.
In WIPO Case No. D2002-0217, the Panelist specifically found that the respondent registered the domain name in bad faith and had no legitimate rights or interests in it.
Respondentís factual assertions
The Respondent did not participate in this proceeding.
5. Partiesí Contentions
The Complainant relies on its longstanding use and registrations of the word "sunkist" alone or with other words and states that the subject domain name is identical.
To meet the requirement that it establish that the Respondent does not have a legitimate interest in the subject domain name and that she has acted in bad faith, the Complainant relies on a domain name dispute proceeding involving the domain name <sunkist.info>. The Respondent is the respondent in that case and she registered the subject domain name very shortly after the other proceeding was initiated.
The Respondent did not participate in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the word "sunkist" through long use and many registrations around the world. The subject domain name differs with the Complainantís mark only by the addition of .biz, which is irrelevant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The Complainant provides very little information on which the Administrative Panel could conclude that the Complainant has met its obligation to establish that the Respondent does not have a legitimate interest in the subject domain name.
A respondent is not obliged to participate in a STOP proceeding and its failure to do so does not constitute an admission of facts alleged by a complainant, but the respondent is vulnerable to inferences that flow naturally from the information provided by the complainant. In addition, assertions of fact that are not obviously unreasonable will be taken as true.
The Complainantís mark is very, well known worldwide and is registered extensively in Hong Kong, SAR of China. The Respondent was the respondent in a related domain name dispute that involved a domain name essentially identical to the subject domain name. In that proceeding, she alleged that she was a collector of domain names, negotiated with the Complainant to sell the domain name and ultimately offered to do so for $1,000,000.
This relevant information was provided to the Administrative Panel in this case only by way of attaching material from the other case. The Administrative Panel takes it into account, but reminds the Complainant that it has the obligation of putting forward information in each case to establish each required element.
The timing of the Respondentís registration tells against her as does her failure to answer the Complainantís communications concerning the subject domain name.
On the unusual facts of this case, the Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(ii)
C. Bad Faith
The Complainantís case on bad faith suffers from the same deficiencies as its case concerning the Respondentís lack of a legitimate interest.
The Administrative Panel is not entitled to reach the same conclusions as another administrative panel simply on the basis on that tribunal decision. Administrative panels are not domestic courts which either are bound by or which, as a matter of course, follow the decisions of each other. It might be that it could be argued that the parties in this proceeding are bound by the result in WIPO Case No. D2002-0217, but this contention was not advanced substantively by the Complainant. In addition, although the parties are the same and the domain names essentially identical, the information giving rise to the bad faith finding in the other case is absent in this case.
The Administrative Panel looks to the context of the Respondentís behavior. She clearly knew of the Complainantís interests when she registered the subject domain name. She knew that her proposal to sell the other domain name was being used to establish bad faith, which might explain her silence in this case. The registration has blocking effect on the Complainant, in that it cannot use .biz in association with its well-known mark.
There is no apparent use that the Respondent could make of the subject domain name without trespassing on the rights of the Complainant.
Although a finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another, does not lead automatically to a conclusion of bad faith, the facts that support the finding are relevant to the bad faith issue.
On the unusual facts of this case, the Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii)
Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: July 28, 2002