World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W. K. Kellogg Foundation v. Domain Admin / Trade Out Investments Ltd

Case No. D2011-1613

1. The Parties

Complainant is W. K. Kellogg Foundation of Battle Creek, Michigan, United States of America, represented by Sidley & Austin, United States of America.

Respondent is Domain Admin ID#10760 of Nobby Beach, Queensland, Australia; and Trade Out Investments Ltd., of Caracas, Venezuela.

2. The Domain Name and Registrar

The disputed domain name <kelloggfoundation.org> is registered with Power Brand Center Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 23, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On September 27, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 28, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 3, 2011.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 25, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on November 8, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, W.K. Kellogg Foundation ("Kellogg Foundation") was organized under the laws of Michigan, the United States of America (“United States”) on June 19, 1930, by breakfast cereal pioneer, W.K. Kellogg. The Kellogg Company, a related entity, is and has been for over a century a well-known manufacturer and distributor of breakfast cereals throughout many parts of the world including South America. One of the prominent meanings of the word foundation as stated in the Free Merriam Webster Dictionary is: “An organization or institution established by endowment with provision for future maintenance”.

The mission of the Kellogg Foundation is to promote the health, education and welfare of underprivileged children and families through charitable fund raising and grant making; and through the award of scholarships that focus upon social programs involving health, rural development, family economic security, early childhood education and higher education, charitable fund raising, food systems and healthful food practices, community development, racial healing and equality, juvenile justice, career guidance and counseling, and the promotion and arrangement of educational programs and conferences relating thereto. Initially primarily a regional organization, Complainant has since the early years of World War II (1939 — 1945) expanded its grant making to the countries of Southern Africa and Latin America.

Since 1930, Complainant has consistently used the name and marks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION ("Complainant's Trademarks") to promote its grant making and charitable services. Complainant submitted proof in the form of literature, publications, and promotional materials distributed by Complainant since 1930, consistently referring to W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION as a symbol of source or origin of Complainant's goods and services. Commencing in about 1997 Complainant developed websites to promote its grant making and charitable services in association with its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION over the Internet.

Complainant has given more than USD 3 billion in grants since 1930 to help people

Complainant does not own any registered trademarks for W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION

The disputed domain name was registered on August 21, 2008.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION have been extensively promoted and used in association with its goods and services as described in Section 4, immediately above, for over eighty years in the United States and for long periods of time in South America and South Africa. Complainant states that each of Complainant’s two trademarks serve to distinguish Complainant’s goods and services among the public in those countries where Complainant has provided over USD 3 billion for goods and services in association with its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION.

Complainant states that lack of ownership of trademark registrations does not diminish Complainant’s rights in its marks. Under United States law, trademark rights arise upon use, without regard to registration. See Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564, 571-572 (6th Cir. 2001). This is also the consensus view of panels under the UDRP. Policy paragraph 4(a)(i) does not expressly limit the application of the Policy to registered trademarks or service marks. See Uitgerverij Crux v. W Frederic Isler, WIPO Case No. D2000-0575, "[a] fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered."

Complainant further submits that under United States trademark law, personal names may be protected as marks with proof of secondary meaning. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 13: 2 -13: 3 (2011). Personal names may become strong and well-known and entitled to a broad scope of protection. See E. I. Du Pont de Nemours & Co. v. Societe S. T Dupont, 161 U.S.P.Q. 489, 491 (T.T.A.B. 1969). Secondary meaning is a question of fact which may be proved by circumstantial evidence. McCarthy, supra at §15: 30, 15: 50. Circumstantial evidence of consumer recognition may be inferred by the effect of advertising. "[W]hile secondary meaning is shown by the success rather than by the mere fact of an enterprise's promotional efforts…the normal consequence of substantial publicity may be inferred." President & Trustees of Colby College v. Colby College - New Hampshire, 185 U.S.P.Q. 65, 67 (1st Cir. 1975). Complainant's long-standing and extensive use of its marks to promote its mission has borne fruit; at its 75th anniversary in 2005, Complainant had spent more than USD 3 billion in grants to help people.

Complainant states that as a crucial part of its obligation, as a grant making institution, it has in association with its trademarks W.K. KELLOGG FOUNDATION or KELLOGG FOUNDATION to inform the public of the types of grant making, charitable programs, educational seminars and publications available and to invite the public to make submissions for grants to Complainant.

Complainant further states that it registered the domain name <wkkf.org> on April 10, 1995. Use of Complainant's Trademarks on the Internet appears as early as March 27, 1997, on <webarchive.org>. Complainant states that its website is crucial for alerting people from all over the world of the opportunity to apply for grants and to become informed of charitable programs, events and educational opportunities offered by Complainant. For example, grant seekers may apply for grants directly through Complainant's website; and Complainant's website streamlines community-based efforts to find funding for programs that directly assist in the development or implementation of programs that solve social problems in the United States, Latin America and the Caribbean, and in South Africa. WIPO panels have stated that "anyone wishing to contact a trademark owner, has the right to contact the owner by addressing himself to the owner's exact identifier, followed by the top level suffix, in this case ‘.com’, and thereby reach the trademark owner, and not a third party, which itself does not have rights in that mark." See, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314.

Complainant submits that it has presented prima facie evidence that its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION have achieved secondary meaning and common law rights, namely that: 1) Complainant's marks have been in use for 80 years; 2) Complainant has expended considerable resources promoting its marks and generating revenue which has enabled it to award over USD 3 billion in philanthropic grants; 3) that Complainant's marks have appeared on a wide variety of printed materials since at least as early as 1938, and in electronic media since at least as early as 1997; and 4) that Complainant's marks have had a wide geographic audience in the United States, South Africa and Latin America since at least as early as the 1940's.

Complainant submits that as the whole of Complainant's mark KELLOGG FOUNDATION appears in the disputed domain name <kelloggfoundation.org>; and that the disputed domain name is identical to Complainant's mark KELLOGG FOUNDATION. Complainant has submitted evidence of interchangeable use of W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION as trademarks in its printed and electronic materials. Given that the acronym "W.K." does not convey an identifiable word combination, Complainant believes that KELLOGG FOUNDATION is the distinctive and strong portion of Complainant's Trademarks. See also Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (where a panel finds the disputed domain names <idealeague.com>, <idealeague.info>, <idealeague.net>, and <idealeague.org> confusingly similar to common law rights in the name THE IDEA LEAGUE, the only difference lying in the definitive article "the"). The gTLD suffix ".org" should also be disregarded when assessing similarity. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (stating that gTLD suffixes such as ".com" are generally disregarded in assessing the identity or confusing similarity between a disputed domain name and a complainant's marks).

A.2. No Rights or Legitimate Interests in respect of the Disputed Domain Name

Complainant states that it is not affiliated with Respondent, has not given permission or consent to Respondent or any third party to use its trademarks in domain names, nor has Complainant licensed Respondent or any third party to use its trademark as a domain name.

Complainant further states that it has found no evidence that Respondent is known by Complainant’s trademarks or has registered or used the domain name as a trademark and is not aware that Respondent is known by the domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (no legitimate interest where a registrant has not been licensed by complainant, has not registered or used domain name as a trademark, and has not been known by domain name); See also Ronson Plcv. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 (no legitimate interest where domain registrant had not registered or used a domain name as a trademark).

Complainant submits that it has produced prima facie evidence of secondary meaning in its long standing and extensive use of its common law trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION by producing evidence of same since as early as 1930. Complainant's rights in its trademarks precede Respondent's registration of the disputed domain name <kelloggfoundation.org> which was registered on August 21, 2008, by over 75 years.

Complainant further states that Respondent's use of the disputed domain name resolves to a pay-per click site. On June 2, 2011, and June 14, 2011, the website at the disputed domain name was titled “Welcome to kelloggfoundation.org" and listed a series of pay-per click advertisements for grant making services. The website at the disputed domain name serves no purpose but to divert the public from Complainant's bona fide grant making services. A search of the Internet using Complainant's trademarks might land an Internet user on Respondent's web page, confusing the public as to whether the links were to Complainant's bona fide services. Thus, the web pages at the disputed domain name are not evidence of any demonstrable preparations by Respondent to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services under UDRP Policy paragraph 4(c)(i).

Complainant further submits that there is no evidence that Respondent is making a legitimate noncommercial or fair use of the name “kellogfoundation” under UDRP Policy paragraph 4(c)(iii). Rather, Respondent is making commercial, unfair use of Complainant's valuable trademarks to divert consumers to Respondent's pay-per-click sites. Operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites. See Vance International, Inc. v. Abend, NAF Claim No. 970871. Respondent's use tarnishes Complainant's trademarks by creating initial interest confusion that may frustrate consumers seeking to find Complainant's website, or direct them to less reputable sights. Respondent's website uses terms that are descriptive of health, education and welfare services, implying affiliation of source or endorsement by Complainant who provide such services in association with its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION.

A.3. Registration in Bad Faith

Complainant states that its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION are extensively used in respect of grant making, charitable programs, educational seminars and publications relating thereto and are well known trademarks with a substantial and widespread reputation throughout the United States, South America and South Africa. Awareness of the trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION is significant and substantial among the relevant public.

Complainant further states that it has found no evidence that Respondent is known by Complainant’s trademarks; or has registered or used the disputed domain name as a trademark; and is not aware that Respondent is known by the domain name. Complainant submits that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION at the time of the registration of the disputed domain name on August 21, 2008. Complainant submits it is rather obvious that knowledge of Complainant’s trademarks motivated Respondent to register the disputed domain name. The disputed domain name redirects to the website “www.kelloggfoundation.org”, which displays a series of pay-per click sites and ads for grant making service. The disputed domain name serves no purpose but to divert the public from Complainant's bona fide grant making services.

Complainant states that Respondent is a serial cybersquatter who has been found to have registered domain names that were confusing with well-known trademarks in recent UDRP proceedings. Complainant submits that circumstantial evidence suggests that Respondent was aware of the great value of Complainant's trademarks, and the demand for Complainant's services, and registered the disputed domain name for the purpose of obtaining pay-per-click income from Internet searchers familiar with Complainant's well known trademarks. Respondent has a pattern for this conduct. Respondent has been found to be a cybersquatter in five recent UDRP proceedings: Kimmel Center, Inc. v. PrivacyProtect.org / Tech Support, Trade Out Investments Ltd., WIPO Case No.. D2011-0293; Public Storage v. PrivacyProtect.org / Trade Our Investments Ltd., WIPO Case No..D2011-0452; Virgin Enterprises Limited v. Trade Out Investments Ltd / Power Brand Center Corp., WIPO Case No. D2011-0640; Time Warner Cable Inc. v. Trade Out Investments Ltd /Tech Support, NAF Claim No. 1378264; and Diversey, Inc. v. Trade Out Investments Ltd. /Tech Support., NAF Claim No. 1390471. In all cases, Respondent did not file a Response. In all cases, Respondent incorporated complainant's well-known trademarks. In all cases, the disputed domain names were transferred. This Panel can infer that such conduct is evidence of bad faith in Respondent's adoption of Complainant's mark.

A.4. Use in Bad Faith

Complainant states that Respondent is using the disputed domain name in bad faith as set forth in paragraph 4(b)(ii) and 4(b)(iv) of the UDRP Policy.

Paragraph 4(b)(ii) of the Policy provides that the following circumstance, in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith: “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 you have engaged in a pattern of such conduct.”

Complainant states that circumstantial evidence suggests that Respondent is aware of the great value of Complainant's trademarks, and the demand for Complainant's services, and has registered the disputed domain name to prevent Complainant from using its own valuable trademarks as domain names. Respondent has a shown a pattern of registering domain names which have been found to be confusing with well known trademarks. Respondent has been cited in five UDRP proceedings as stated above in Section A.3.

Complainant further states that with regard to whether Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant's business under UDRP Policy paragraph 4(b)(iii), circumstantial evidence suggests that Respondent would have known of Complainant's prior rights given Complainant's long-standing and extensive use of its trademarks and that registering the disputed domain name that is confusingly similar to those marks would disrupt Complainant's business.

Complainant further submits that UDRP Policy paragraph 4(b)(iv) provides that it is evidence of bad faith when a respondent targets a complainant and its trademarks by using a domain name which is confusingly similar to Complainant’s trademark for the purpose of deriving commercial gain from Internet users. See The Carphone Warehouse Limited and The Phone House B. V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483: "If the links are based on the trade mark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting"; See also Champagne Lanson v. Development Services / MailPlanet.com Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name). Current ongoing bad faith is demonstrated by Respondent's continued positive action in maintaining a website that resolves to ads for philanthropic themed grants and scholarships: Using Complainant's mark to attract customers to a website is a positive action. Respondent has created a landing page that is keyed to the trademark value of the domain name which incorporates Complainant's valuable trademarks to advertise pay-per-click sites for services directly in Complainant's field. The evidence suggests in this case that Respondent clearly targeted Complainant's valuable trademarks for profit. It is a short step to connect Respondent's actions to be clear indications of bad faith: But for the value of the W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION trademarks, Respondent would have no interest in adopting the disputed domain name <kelloggfoundation.org> as a pay per click site for grant making services. Therefore, Respondent intentionally attracts Internet users to its website by creating a likelihood of confusion with Complainant's trademarks for commercial gain. Respondent has a pattern of such activity with other brand owners.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of the common law trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION.

The WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) at paragraph 1.6 includes the following:

“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name:. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required[…] .A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”

See also Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.

The consensus view of the proof that a complainant must advance to establish common law or unregistered trademark rights is summarized in paragraph 1.7 of the WIPO Overview, 2.0 as follows: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services: Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”

Complainant has submitted considerable documentation and evidence of use of its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION for over 75 years in association with informing the relevant public in the United States, South America and South Africa of its services, including types of grant making, charitable programs, educational seminars and publications available from Complainant; and inviting the relevant public to make submissions for grants to Complainant. Commencing in 1997, Complainant has advertised, promoted its services and invited applications for grants over the Internet.

Complainant has dispersed over USD 3 billion dollars to those requestors who met Complainants criteria since its incorporation.

The Panel finds that Complainant has established secondary meaning as relate its trademarks W.K. KELLOGG FOUNDATION and KELLOGG FOUNDATION in association with the types of grant making, charitable programs, educational seminars and publications available from Complainant.

The Panel finds that the disputed domain name <kelloggfoundation.org> is identical to Complainant’s trademark KELLOGG FOUNDATION and confusingly similar to Complainant’s trademark W.K. KELLOGG FOUNDATION.

The inclusion of the top level domain descriptor “.org” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain name <kelloggfoundation.org> is identical to Complainant’s trademark KELLOGG FOUNDATION and confusingly similar to Complainant’s trademark W.K. KELLOGG FOUNDATION.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks W.K. KELLOGG FOUNDATION or KELLOGG FOUNDATION.

Complainant has been using its W.K. KELLOGG FOUNDATION or KELLOGG FOUNDATION trademarks since 1930 to promote its services as found and described in greater detail in Section 4 above. Respondent registered the disputed domain name <kelloggfoundation.org> over 75 years later on August 21, 2008. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

Complainant contends that it has found no evidence that Respondent is known by Complainant’s trademarks or has registered or used the disputed domain name as a trademark, and is not aware that Registrant is known by the domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (no legitimate interest where a registrant has not been licensed by complainant, has not registered or used domain name as a trademark, and has not been known by domain name); See also Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 (no legitimate interest where domain registrant had not registered or used a domain name as a trademark).

The disputed domain name resolves to a linkfarm, which prominently displays a series of links for grant making services of Complainant and others in addition to links found on general advertising pages. The Panel finds that the website associated with the disputed domain name serves no purpose but to divert some Internet viewers familiar with Complainant’s trademarks to other websites for pay-per-click income.

There is no evidence that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. See The Caravan Club v. Mrgsale, NAF Claim No. 95314; Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith); See also CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response to avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C. 1. Registered in Bad Faith

Complainant has been using its W.K. KELLOGG FOUNDATION or KELLOGG FOUNDATION common law trademarks since 1930, to promote its grant making and charitable services as found and described in greater detail in Section 4 above. The disputed domain name <kelloggfoundation.org> was registered over 75 years later on August 21, 2008.

Complainant has been using its trademarks W.K. KELLOGG FOUNDATION or KELLOGG FOUNDATION in association with its grant making and charitable services in South America since the 1940’s and on the Internet since 1997. Respondent has an address in Venezuela. One of the meanings of the word “foundation”, which is part of the disputed domain name, is described in Free Merriam Website Dictionary as: “An organization or institution established by endowment with provision for future maintenance”. There is no evidence on Respondent’s website associated with the disputed domain name that Respondent operates a foundation or any other business. The Panel finds that it is exceedingly unlikely that the disputed domain name was not based on Complainant’s trademarks.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(ii) of the Policy provides that the following circumstances, in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith: “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 you have engaged in a pattern of such conduct.”

The Panel infers from the evidence submitted by Complainant and not denied by Respondent that Respondent was aware at the date of registration of the disputed domain name of the substantial value of Complainant's trademarks, and the demand for Complainant's services, and registered the disputed domain name to prevent Complainant from using its own valuable trademarks as domain names. Respondent has a shown a pattern of registering domain names which have been found to be confusing with well known trademarks. Respondent has been cited in five UDRPproceedings: Kimmel Center, Inc. v. PrivacyProtect.org / Tech Support, Trade Out Investments Ltd., WIPO Case No.. D2011-0293; Public Storage v. PrivacyProtect.org /Trade Our Investments Ltd., WIPO Case No.. D2011-0452; Virgin Enterprises Limited v. Trade Out Investments Ltd / Power Brand Center Corp., WIPO Case No. D2011-0640; Time Warner Cable Inc. v. Trade Out Investments Ltd /Tech Support, NAF Claim No. 1378264; and Diversey, Inc. v. Trade Out Investments Ltd. /Tech Support., NAF Claim No. 1390471.

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

Respondent’s webpage associated with the disputed domain name includes links to entities providing products and services related to the kind of products and services offered by Complainant, without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name enables Respondent to draw Internet users to its website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click-through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g. The Carphone Warehouse Limited and The Phone House B. V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483, "If the links are based on the trade mark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting". See also Champagne Lanson v. Development Services / MailPlanet.com Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name).

The Panel finds that Complainant has proven on a balance of probabilities that Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name within the meaning of paragraph 4(b)(ii) of the Policy and has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kelloggfoundation.org> be transferred to the Complainant.

Ross Carson
Sole Panelist
Dated: November 22, 2011

 

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