WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kraft Heinz Foods Company v. Whoisguard Protected, Whoisguard, Inc. / Nathan Cole, Nathancole
Case No. D2017-0190
1. The Parties
The Complainant is Kraft Heinz Foods Company of Chicago, Illinois, United States of America (“US”), internally represented.
The Respondent is WhoisGuard Protected / WhoisGuard, Inc. of Panama / Nathan Cole, Nathancole of Bengaluru, Karnataka, India.
2. The Domain Name and Registrar
The disputed domain name <kraftheinzcompany-usa.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2017. On February 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, the Registrar 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 the Complainant on February 8, 2017 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 February 13, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 17, 2017. 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 Kraft Heinz Foods Company, a Pennsylvania Corporation and wholly-owned subsidiary of The Kraft Heinz Company. It is the fifth-largest food and beverage company in the world and its brands include, among others, KRAFT, HEINZ, PHILADELPHIA, PLANTERS, VELVEETA, MAXWELL HOUSE, CAPRI SUN.
The Complainant’s affiliate companies own several trademark registrations around the world for the trademarks HEINZ and KRAFT, including the US trademark registrations for HEINZ mark dated from 1897 (registration n° 31048, granted on December 28, 1897 in the name of H.J. Heinz Company Corporation) and for KRAFT dated from 1952 (registration n° 554187, granted on January 29, 1952 in the name of Kraft Foods Group Brands LLC).
The Complainant is the owner of the domain name <kraftheinzcompany.com> since March 24, 2015 (Annex 2).
The disputed domain name was registered on November 3, 2016 and the website is currently inactive.
5. Parties’ Contentions
The Complainant states that, through its affiliated companies, it owns trademark registrations in several jurisdictions for the trademarks KRAFT and HEINZ, and that the disputed domain name incorporates both these trademarks.
According to the Complainant, the disputed domain name confuses and deliberately deceives Internet users, since the only difference between the disputed domain name and the Complainant’s registered domain name is the insertion of a hyphen followed by the letters “usa”.
The Complainant argues that the Respondent does not use the disputed domain name in connection with a
bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.
The Complainant argues that the Respondent is a fraud and that the disputed domain name was used in bad faith since the owner sent email messages to potential Kraft Heinz customers and Internet users without the Complainant’s authorization. Those emails solicited the sale of – and payment for – non-existent products on behalf of the Complainant.
In addition, the Complainant alleges that the Respondent (i) engaged in identity theft by sending the emails under the name of Kraft Heinz’s Chief Operating Officer; (ii) referred Internet users to the Compainant’s website (“www.kraftheinzcompany.com”); (c) referred to Kraft Heinz’s NASDAQ symbol “KHC” and (d) plagiarized the press release company description.
The Complainant also mentions that this is the second time the Respondent has worked a fraud using a domain name similar to the Complainant’s trademarks and domain name. On October 24, 2016, the Respondent registered <kraftheinzcompany-us>, which was transferred to the Complainant following the panel’s decision dated November 28, 2016 (Annex 5).
According to the Complainant, the Respondent is not authorized to register and use the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(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 evidence presented demonstrates that the Complainant’s affiliates are the owners of the trademarks HEINZ and KRAFT in the US, in several classes of services and products, and of the domain name <kraftheinzcompany.com>. The Panel finds that the Complainant has trademark rights for purposes of the Policy.
The Complainant’s trademarks and domain name predate the disputed domain name.
The disputed domain name comprises the Complainant’s trademarks KRAFT and HEINZ. The addition of the expression “company” and of the word “usa,” which refers to the initials of United States of America, does not avoid confusion between the disputed domain name and the Complainant’s trademarks. On the contrary, the addition of “company-usa” enhances confusion, since the Complainant is an American company and the element “company-usa” refers to “a company from the USA”.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademarks KRAFT and HEINZ.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademarks, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademarks HEINZ and KRAFT are registered by the Complainant in several countries, including the US and have been used since a long time.
The disputed domain name is comprised by both trademarks and the Respondent has no rights or legitimate interests in the disputed domain name.
There is enough evidence in the Complaint that the disputed domain name was used with the intent to deceive Internet users to believe they were negotiating a business arrangement with the Complainant.
Therefore, this Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for its own or for third parties’ commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and misleading Internet users to believe that its website belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s intention of taking undue advantage of the trademarks HEINZ and KRAFT as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being 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 <kraftheinzcompany-usa.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: March 21, 2017