WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sara Lee Foods, LLC v. Qais Satarzadh
Case No. D2015-0918
1. The Parties
The Complainant is Sara Lee Foods, LLC of Chicago, Illinois, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Qais Satarzadh of Pleasanton, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ballparkjerky.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2015. The amended Complaint was filed with the Center on the same day. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 proceeding commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2015.
The Center appointed Angela Fox as the sole panelist in this matter on July 3, 2015. 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 is a subsidiary of Tyson Foods, Inc., one of the largest food production companies in the United States and throughout the world. One of the Complainant’s brands is BALL PARK.
BALL PARK-branded hot dogs have been sold by the Complainant or its predecessors-in-interest for more than 50 years. The Complainant also markets a variety of other meat products under the BALL PARK trademark, including beef patties, angus bratwurst, and beef hot links. These products are sold widely in supermarkets and convenience stores throughout the United States.
The Complainant owns United States federal trademark registrations for BALL PARK and marks including BALL PARK, including U.S. Reg. No. 1,807,761, issued November 30, 1993 and U.S. Reg. No. 3,786,870, issued May 11, 2010, copies of which were annexed to the Complaint.
The Complainant also operates a website at “www.ballparkbrand.com”, in which the BALL PARK trademark prominently appears together with information about the meat and other food products sold under it. The Complainant submits that it has acquired significant goodwill in the BALL PARK brand since use of it began in 1961.
In late 2014 the grocery sector media reported on innovations in the Complainant’s BALL PARK product line, including the planned launch in 2015 of BALL PARK-branded jerky.
The disputed domain name was registered on February 10, 2015. Attached to the Complaint was a screenshot showing that the disputed domain name has been used to host a landing page featuring links to third-party websites under topics including “Fundraising Beef Jerky”, “Biltong Shopper” and “Jerky Hut Beef Jerky”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark BALL PARK and to its registered trademarks that include BALL PARK.
It further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and alleges in particular that the Respondent’s provision of pay-per-click (“PPC”) links to unrelated third-party websites, including to websites relating to jerky, is not a bona fide commercial use such as to confer a right or legitimate interest.
Finally, the Complainant argues that the Respondent registered and used the disputed domain name in bad faith, with the intention of attracting Internet users seeking the Complainant’s website by creating a likelihood of confusion with the Complainant’s marks, and with the intention of profiting commercially from visitors clicking through to the websites linked to the Respondent’s site.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved ownership of registered trademark rights in BALL PARK.
The disputed domain name comprises the word “ballpark”, a descriptive product indicator, “jerky”, and the non-distinctive generic Top-Level Domain suffix “.com”. The element “ballpark” is identical to the Complainant’s BALL PARK trademark. While the space between “ball” and “park” is not represented, that is of no consequence since such spaces, as such, cannot be incorporated in domain names. The descriptive word “jerky” is not capable of distinguishing the disputed domain name from the Complainant’s trademark; it does no more than refer to a generic product similar to meat products that the Complainant was already marketing under the BALL PARK brand, and identical to a product which the Complainant had recently announced its intention to market under that brand.
It is well-established that descriptive or generic additions, and particularly those that refer to the goods or services with which a trademark is used, do not avoid confusing similarity of domain names and trademarks (see, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547; Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580; and Wal-Mart Stores, Inc. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0950).
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name, and the Respondent has made no effort to demonstrate that it does.
The Respondent has been using the disputed domain name to link to a landing site hosting links to third-party commercial websites, including websites relating to jerky and to Complainant’s competitors. The Complainant alleges, and the Respondent does not deny, that the Respondent has been profiting from PPC income arising from that use.
Under paragraph 4(c)(i) of the Policy, a respondent may have a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.
In this case, however, the Respondent’s activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy. The ability of the disputed domain names to attract Internet users is based on the trademark significance of the element “ballpark”, which is identical to the Complainant’s BALL PARK trademark. The Respondent’s use of the Complainant’s trademark to attract Internet users to a website offering links to third-party websites is essentially a form of bait-and-switch selling, which is calculated to mislead Internet users. Such activities do not amount to a bona fide offering of goods or services capable of conferring a right or legitimate interest (see similarly mVisible Technologies, Inc. supra; Robert Bosch GmbH v Asia Ventures, Inc., WIPO Case No. D2005-0946; and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered on February 10, 2015. The Complainant filed evidence that three months before that, the Complainant had announced its intention to introduce BALL PARK-branded jerky as a new product in 2015.
The Respondent is based in the Complainant’s home market and that fact, as well as the timing and the inclusion within the disputed domain name of descriptive matter directly relevant to the Complainant’s planned launch, together create a presumption that the disputed domain name was registered in the knowledge of the Complainant’s plans as publicized in the media, with the intention of deriving commercial advantage from the anticipated launch of BALL PARK-branded jerky through PPC revenue. The Respondent has done nothing to challenge or rebut that presumption.
As noted above, the disputed domain name has been used to host PPC links to unrelated third-party commercial websites, some of which relate to jerky. The Respondent’s use appears to have been calculated to attract Internet users by creating a likelihood of confusion with the Complainant’s BALL PARK mark and then to profit from PPC income arising from the diversion of Internet users. Such conduct is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and has been used in bad faith.
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 <ballparkjerky.com> be transferred to the Complainant.
Date: July 17, 2015