WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC v. Fundacion Private Whois / PPA Media Services
Case No. D2013-0634
1. The Parties
The Complainant is Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC of Northfield, Illinois, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“U.S.”).
The Respondent is Fundacion Private Whois of Panama City, Panama / PPA Media Services of Santiago de Chile, Chile.
2. The Domain Name and Registrar
The disputed domain name <kraftwhatscooking.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name(s) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 11, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2013.
The Center appointed Daniel Peña as the sole panelist in this matter on May 17, 2013. 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
The Complainant’s trademark and trade name have been in use for more than 100 years, since J.L. Kraft and his four brothers incorporated their business selling cheese to stores in Chicago, Illinois in or about 1909. Since then, Complainant’s business, which continues to use the expression “kraft” as its trade name, has grown substantially to include some of food brands such as KRAFT cheese products, among others.
The Complainant employees over 25,000 people in the U.S. and Canada.
The Complainant’s global sales in 2011 were approximately USD18 billion, making Kraft the 4th largest food and beverage company in North America.
The Complainant has used the WHAT’S COOKING trademark in connection with a magazine and a television show in Canada and a series of online cooking tutorials.
Beginning 1992, the WHAT’S COOKING magazine was first published as a 20-24 page mini-magazine distributed through newspapers as an insert and in stores. In 2000, the WHAT’S COOKING publication became a bound magazine, which features a variety of recipes for the home cook. The covers of WHAT’S COOKING magazine bear both the KRAFT and WHAT’S COOKING trademarks.
In January 2007, the Complainant launched the WHAT’S COOKING television program on CityTV and the French-language TVA network in Canada. The English-language WHAT’S COOKING television show was broadcast for four seasons, until December 2011 and averaged up to 250,000 weekly viewers. The French-language version of the WHAT’S COOKING show is still airing on TVN.
The Complainant continues to produce new content for its WHAT’S COOKING channel at YouTube, “www.youtube.com/whatscooking”.
The Complainant’s WHAT’S COOKING YouTube channel averages 500,000 annual video views.
The Complainant owns registrations for its KRAFT trademark, including U.S. Registration Nos. 554,187, 670,330, 801,424, 1,052,526, 1,935,882 and 2,179,033 and Canadian Reg. Nos. TMDA39235, TMDA50390, TMA206408, TMA394240 and TMA358986 for KRAFT.
The Complainant owns Canadian Trademark Registration Nos. TMA443822a nd TMA443823 for WHAT’S COOKING.
The Complainant owns numerous trademark registrations for its KRAFT marks in other jurisdictions around the world, including Chile where the Respondent is purportedly located.
The Complainant, either on its own or through affiliated companies, owns the domain names <kraft.com>, <kraftfoodsgroup.com>, <kraftcanada.com> and <whatscookingtv.com>. The Complainant owns and operates the websites associated with these domain names.
The Complainant wrote to the Respondent regarding its registration of the disputed domain name on February 11, 2013. The Complainant has received no response from the Respondent to this letter.
5. Parties’ Contentions
The Complainant uses and owns the KRAFT trademark and tradename and the WHAT’S COOKING trademark.
The KRAFT trademark, through use and promotion for over a century, is one of the most famous trademarks in the world.
Through the Complainant’s registration and extensive use of the KRAFT and WHAT’S COOKING marks, and the success of Complainant’s offerings under the KRAFT and WHAT’S COOKING marks, these marks have come to be exclusively associated with the Complainant.
The disputed domain name was created on September 18, 2008, and acquired by the Respondent on or around August 24, 2012.
The Respondent’s acquisition of the disputed domain name occurred long after the Complainant’s KRAFT and WHAT’S COOKING trademarks were first used and registered by the Complainant.
There is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use the Complainant’s marks in the disputed domain name.
The Respondent is using the trademarks KRAFT and WHAT’S COOKING to attract Internet users to its website “www.kraftwhatscooking.com” so that Respondent can generate “pay-per-click” revenue. When Internet users looking for information about the Complainant’s KRAFT products or its WHAT’S COOKING magazine, television show and videos type the disputed domain name into their Internet browsers, they instead are directed to a “parking” website. The parking site contains links to websites of entities not associated with the Complainant, many of which advertise products and other goods in direct competition with the Complainant.
The same Respondent has been ordered to transfer domain names, including third party trademarks, in several prior UDRP proceedings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant has clearly shown that it has rights in the KRAFT Trademarks registered in several countries including Chile, where the Respondent is located, and furthermore, the rights it has in the WHAT´S COOKING trademark registered in Canada.
The disputed domain name incorporates the whole of the Trademarks KRAFT and WHAT´S COOKING to which there were added the generic top level domain “.com” (gTLD). The Panel agrees with previous panel UDRP decisions cited by the Complainant that the addition of these descriptive terms and gTLD suffix does not alter or diminish in any way the confusing similarity between the Complainant’s KRAFT and WHAT´S COOKING Trademarks and the disputed domain name.
The Panel finds that the Complainant has rights in the KRAFT and WHAT´S COOKING trademarks and the disputed domain name is confusingly similar to this trademark.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use their KRAFT and WHAT´S COOKING trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant’s marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademarks and that the Respondent has no relationship to the KRAFT and WHAT´S COOKING trademarks.
In several decisions under the Policy involving disputes brought against the same Respondent as in this Complaint, previous panels found bad faith under paragraph 4(b)(iii) of the Policy. The Complainant submits that it is prevented from registering the disputed domain name itself. It further submits that the Respondent follows a “pattern of conduct” as demonstrated by the findings on bad faith in these previous UDRP disputes. Among these previous cases decided against the Respondent are the following: Inter-Continental Hotels Corp. v. Fundacion Private Whois domain Administrator and PPA Media Services, WIPO Case No. D2012-1095; Homer TLC, Inc. v. PPA Media Services / Ryan G Foo, NAF Claim No. FA1111001416637; Petroleo Brasileiro S.A. – Petrobras v. PPA Media Services, Ryan G Foo / Private Whois, WIPO Case No. D2012-0655; El Palacio de Hierro S.A. de C.V. v. Private Whois palaciodehierro.com / PPA Media Services, Ryan G Foo, WIPO Case No. D2012-0185; EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2012-1093; Dyson Limited v. PPA Media Services, Ryan G Foo (also known as Funcacion Private Whois, Domain Administrator), WIPO Case No. D2012-0897.
It is clear to this Panel that the Respondent is using trademarks KRAFT and WHAT’S COOKING to attract Internet users to its website “www.kraftwhatscooking.com” so that Respondent can generate “pay-per-click” revenue. Thus, the Respondent is trying to benefit from the confusion created by the presence of the expression “Kraft” within the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the websites, by creating a likelihood of confusion with the Complainant’s KRAFT Trademarks as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy.
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 <kraftwhatscooking.com> be transferred to the first Complainant (as requested in the Complaint), Kraft Food Group Brands LLC.
Date: May 31, 2013