WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Pepper/Seven Up., Inc. v. NA
Case No. D2003-0773
1. The Parties
The Complainant is Dr. Pepper/Seven Up., Inc., a corporation duly organized and validly existing under the laws of the state of Delaware, with its principal place of business located in Plano, Texas, in the United States of America, and represented by the law firm of Fross Zelnick Lehrman & Zissu, PC, from the United States of America.
The Respondent is an individual or entity doing business or simply registered as NA, with its place of business located in Xiamen, Fujian, China.
2. The Domain Name and Registrar
The domain name under dispute is <hawaiianpunch.com> (the "Domain Name").
The registrar of the disputed domain name is eNom ("eNom" or the Registrar), United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2003, and on October 2, 2003, through e-mail and hardcopy, respectively, with the required filing fee for a single-member administrative panel. The Complaint was filed in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules). An Acknowledgment of the Receipt of Complaint was sent to Complainant by the Center on October 2, 2003.
On October 2, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The Registrar failed to submit a registrarís Verification Response. Notwithstanding the above, the Center made a registrarís "Who-Is" printout on October 6, 2003, and furthermore, this Panel confirmed through the information reflected on the registrarís "Who-Is" website, which provides information only of domain names that are registered by eNom, Inc., that the Respondent is listed as the registrant; that such domain name is in "registrar-lock" status; and confirmed the details for the administrative and technical contacts at which communications under this domain name dispute have been sent to.
On October 6, 2003, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules. It is worth mentioning that the undersigned sole panelist has independently determined and agrees with the Centerís assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.
On October 6, 2003, the Center properly sent via e-mail and hardcopy through express mail to Respondent and to the technical and administrative contact, a "Notification of Complaint and Commencement of Administrative Proceeding" enclosing copy of Complainantís complaint. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via Federal Express on September 30, 2003. This sole panelist considers that the Complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) and 4(a), of the Rules.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 27, 2003.
On November 6, 2003, the undersigned signed and sent to the Center, a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 7, 2003, the Center sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro W. Buchanan Smith as sole panelist and scheduling November 21, 2003, as the date for issuance for the Panelís decision, pursuant to paragraphs 6(h) and 15(b) of the Rules. The Panel finds that it was properly constituted.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties (taking note of Respondentís default in responding to the Complaint), nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant, Dr. Pepper/Seven Up, Inc. is a member of the Cadbury Schweppes plc family of companies. The Complainant distributes several brands of beverages including Dr. Pepper, Seven Up, A & W, Canada Dry, Schweppes, Country Time and RC Cola. Among the oldest brands of juice beverages distributed by Complainant is Hawaiian Punch. Hawaiian Punch is a fruit punch drink made with seven natural fruits including such tropical favorites as pineapple, passion fruit, papaya and guava. The product was first developed and sold in 1934. Hawaiian Punch is sold in the United States, Canada, Mexico, Puerto Rico, the Dominican Republic, and the Virgin Islands.
As indicated by Complainant: (i) from 1999 through 2002, retail sales of Hawaiian Punch juice drink products were at least $785 million dollars; (ii) in 1999, Cadbury Schweppes, Complainantís parent company, paid in excess of $200 million to acquire all of the rights to the HAWAIIAN PUNCH trademark, (iii) since 1999, Complainant has spent over $25 million to market HAWAIIAN PUNCH beverages; (iv) Complainant extensively advertises HAWAIIAN PUNCH products via television, radio and print ads. Samples of ads and other marketing material for Hawaiian Punch and Representative labels from products were attached to the Complaint.
Complainant is the owner of more than 100 trademark registrations for the HAWAIIAN PUNCH mark in more than 70 jurisdictions. Within Asia, the HAWAIIAN PUNCH mark has been registered in Hong Kong, Japan, Korea and Singapore to name just a few jurisdictions. Representative copies of registrations for the HAWAIIAN PUNCH mark in Panama, Mexico, Honduras, Guyana, Guatemala, El Salvador, United States, Korea, Japan, Brazil, Canada, Chile, Colombia, Peru, and Puerto Rico were attached to the Complaint.
As indicated by the Complainant, on January 17, 2001, the Domain Name, which is identical to Complainantís HAWAIIAN PUNCH mark was registered. As of that date, the HAWAIIAN PUNCH mark had been used for more than 60 years, and the HAWAIIAN PUNCH mark had achieved substantial goodwill and high recognition among the public. The Domain Name was originally registered to URLPro. On May 22, 2003, Complainant sent a demand letter to URLPro by e-mail. No response was ever received to the demand letter. Instead, as of June 30, 2003, the domain name ownership was transferred to the Respondent. There has never been any relationship between Complainant and either the prior registrant or the current Respondent, and neither have been licensed or authorized to use the HAWAIIAN PUNCH mark in any manner, including in or as part of any domain name. If the Domain Name is accessed, a barrage of web pages and pop-up browser windows appear for debt collection services, mortgages and other businesses appear, none having anything to do with Complainant, and the web user is trapped into navigating through multiple windows displaying such solicitations. Such use of a domain name to launch the consumer into a series of advertising windows is referred to as "mouse trapping". On August 7, 2003, Complainant sent a demand letter to the Registrant. The demand letter, was sent by e-mail and DHL courier to the Respondentís address listed in the WHOIS record. That no response was ever received to the demand letter and the letter sent by courier was returned.
In support of its Complaint, Complainant submitted a list setting forth by country, of its Trademark Registrations and provided copies of some representative registrations (Complaint Exhibits E and F).
5. Partiesí Contentions
Complainant has strong rights in its HAWAIIAN PUNCH mark as a result of its extensive use for over 60 years and the existence of more than one hundred registrations for the mark in more than seventy countries.
The Domain Name <hawaiianpunch.com> appropriates in its entirety and consists solely of Complainantís HAWAIIAN PUNCH mark.
Respondent can demonstrate no legitimate interest in the Domain Name. Respondent was on notice of Complainantís rights in the HAWAIIAN PUNCH mark at the time it registered the Domain Name. There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name, which consists entirely of Complainantís HAWAIIAN PUNCH mark.
There is no evidence to suggest that Respondent is known by the Domain Name or has ever done business under the Domain Name. The first registrant and now the current registrant chose to ignore Complainantís cease and desist letters thereby giving rise to the inference that Respondent has no legitimate rights.
Respondent is not making bona fide use of the Domain Name, and is not using the Domain Name for noncommercial or fair use purposes. Rather, Respondent is using the Domain Name to launch consumers into a series of unwanted ads. It is evident that Respondent is seeking to gain advertising or other revenue from the name. The fact that Respondent has taken Complainantís trademark, HAWAIIAN PUNCH, shows bad faith. Respondent has registered and used Complainantís mark for the purpose of diverting Internet traffic searching for Complainant to website advertisements likely in exchange for referral payments or other commercial benefits. Such conduct is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy which prohibits use of a domain name to attract, for commercial gain, Internet users to Respondentís on-line location by creating a likelihood of confusion.
Respondent has provided false contact information in its registration for the Domain Name including a false name, phone number and fax number, further evidencing its bad faith.
Respondent has failed to respond to Complainantís cease and desist letter. Numerous panels have found this to constitute evidence of bad faith. Bad faith can be found from the fact that the domain name is so obviously connected with the Complainant that its very taking by someone with no connection with the Complainant suggests "opportunistic bad faith". That as such, the registration of the mark as a domain name without any color of title or justification is proof of bad faith on Respondentís part.
Internet users are likely to believe that the domain name <hawaiianpunch.com> connects to a website associated with or sponsored by Complainant given that Complainant is the exclusive owner of the HAWAIIAN PUNCH trademark throughout the world. Since Respondent has never been authorized by Complainant to use the HAWAIIAN PUNCH mark, the very fact that Respondent has registered <hawaiianpunch.com> establishes bad faith use and registration.
By using Complainantís mark as its domain name, Respondent is attempting to ride on the fame of Complainantís mark and use that fame to divert consumers to its website for commercial advantage.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with eNom (an ICANN accredited domain name registrar), it agreed to be bound by all terms and conditions of a certain "eNom, Inc. Registration Agreement", and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registration Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner by entering into the above mentioned Registration Agreement, under section 14 of such Agreement the Respondent acknowledged and agreed that the domain name is subject to suspension, cancellation or transfer by an ICANN procedure in order to resolve a dispute under the Policy.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of the Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. The failure of the Respondent to submit a response is not due to any omission under these proceedings. There is sufficient and adequate evidence confirming the above.
Considering that the Respondent has defaulted in submitting a response to the allegations of Complainant, this Panel as directed by paragraphs 14(a) and (b) and 15(a) of the Rules shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainantís undisputed representations.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (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 rights or legitimate interests in respect of the domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondentís Domain Name is identical to Complainantís HAWAIIANPUNCH trademark and to the name of some of Complainantís products.
B. Rights or Legitimate Interests
Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Name as it has not used or prepared to use the HAWAIIANPUNCH domain name in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is 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 as contemplated under paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
The Panel also finds that Respondent has used the Domain Name in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainantís mark, as to the source, sponsorship, affiliation, or endorsement of Respondentsí website.
Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panelís decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4(k) of the Policy.
Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel considers:
(1) that the Domain Name registered by Respondent is identical to the name of some of Complainantís products, HAWAIIAN PUNCH, and to Complainantís trademark HAWAIIAN PUNCH;
(2) that Respondent has no rights or legitimate interests in respect of the <hawaiianpunch.com> Domain Name; and
(3) that the <hawaiianpunch.com> Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel orders, pursuant to what is provided for under paragraphs 3(c) and 4(i) of the Policy and 15 of the Rules, that the registration of the domain name <hawaiianpunch.com> be transferred to Dr. Pepper/Seven Up., Inc., Complainant.
Pedro W. Buchanan Smith
Date: November 21, 2003