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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nabisco Brands Company v. The Patron Group, Inc.
Case No. D2000-0032
1. The Parties
Complainant is Nabisco Brands Company, 1105 North Market Street, Suite 803, Wilmington, Delaware 19801 U.S.A. (Nabisco). Respondent is The Patron Group, Inc., 2063 Larkin Street, San Francisco, California 94109, U.S.A. (Patron).
2. Domain Name and Registrar
The domain names in issue are "wheatthins.com", "wheatsworth.com", "bettercheddars.com", "harvestcrisps.com", and "milk-bone.com". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Nabisco’s complaint on February 3, 2000 (electronic version and hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Nabisco made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 7, 2000.
The complaint identifies Patron Group, 2300 Buchanan Street, #3, San Francisco, California 94115, U.S.A., as Respondent, identifies Johan Swildens as the Administrative Contact and the Billing Contact, and states that pre-complaint dealings with respondent were addressed to:
The Patron Group
2300 Buchanan Street, #3
San Francisco, California 94115,
On February 4, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On February 4, 2000, Network Solutions transmitted via email to the Center Network Solutions’ Verification Response, confirming that the registrant is Patron Group and both the administrative and billing contacts are Johan Swildens, and stating:
"The domain name registrations WHEATTHINS.COM, WHEATSWORTH.COM, BETTERCHEDDARS.COM, HARVESTCRISPS.COM and MILK-BONE.COM are in ‘Active’ status."
On February 7, 2000, the Center transmitted via email to "firstname.lastname@example.org"and "hans@swildens. com", among others, Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint. The Center advised that the response was due by February 26, 2000.
On the same day, the Center transmitted via facsimile copies of the foregoing documents to Mr. Johan Swildens at Patron, fax number 1 415 346 7696. Also, on the same day, the Center transmitted via "Post/Courier" copies of the foregoing documents to:
The Patron Group
(Mr. Johan Swildens)
2300 Buchanan Street, Apt. #3
San Francisco, CA 94115
United States of America.
On February 8, 2000, Patron submitted via facsimile to the Center Patron’s response, dated February 8, 2000 and signed by Hans Swildens as President. Patron’s response identifies The Patron Group, Inc., 2063 Larkin Street, San Francisco, CA 04109, as respondent and Hans Swildens, President, as Patron’s representative and the person to whom communications should be sent. Patron agreed (paragraph 4) "to have the dispute decided by one member of the approved list of panelists."
On February 11, 2000, the Center advised the parties via fax that Mr. David Plant had been appointed as the panelist in this proceeding and enclosed a copy of the panelist’s Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint is based on five trademarks, registered in the U.S. Patent and Trademark Office pursuant to six registrations, copies of which appear at Annex A to the complaint, viz.:
WHEAT THINS Reg. No. 1,022,799 October 14, 1975
WHEATSWORTH Reg. No. 93,417 September 16, 1913
BETTER CHEDDARS Reg. No. 1,319,653 February 12, 1985
HARVEST CR ISPS Reg. No. 1,584,989 February 27, 1990
MILK-BONE Reg. No. 72,501 January 26, 1909
MILK-BONE Reg. No. 218,468 September 28, 1926.
b. The Complaint
The complaint alleges (paragraph 8) that each trademark is currently in use. Specifically, the complaint avers (paragraphs 8 and 9(B)) dates of use, goods, and annual wholesale sales as follows:
WHEAT THINS since 1947 crackers >US$160 million
WHEATSWORTH since 1913 crackers >US$9 million
BETTER CHEDDARS since 1983 crackers >US$28 million
HARVEST CR ISPS since 1989 crackers >US$15 million
MILK-BONE since 1908 animal/dog >US$100 million
The grounds for the complaint are:
Paragraph 9 (A) -- The domain names in issue are virtually identical to the corresponding registered trademarks.
Paragraph 9 (B) -- The trademarks have no meaning or significance other than as trademarks identifying Nabisco’s products and distinguishing them from those of competitors. As a consequence of product quality and consumer acceptance, Nabisco’s trademarks have acquired substantial goodwill belonging exclusively to Nabisco. Patron has no active website under any of the domain names in issue.
In light of the foregoing, Patron has no legitimate interest in the domain names.
Paragraph 9 (C) -- The domain names in issue have been registered and used in bad faith because:
(i) The circumstances indicate that Patron registered the domain names primarily for the purpose of selling the domain name registrations to Nabisco, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In an email dated August 02, 1999 (Annex B to the complaint), apparently in connection with a letter Mrs. Gallagher of Nabisco had sent to Patron, Hans Swildens offered to sell to Nabisco "three of the domain names which are the subject of this complaint" for $6900, "far in excess" of Patron’s "out-of-pocket costs related to the domain name[s]." $6900 includes costs "not related to acquiring or maintaining the registration [sic] and/or are not-of-pocket costs... ." Patron admits that "the suggested price of $6900 would allow him [sic] to make a profit."
(ii) Patron’s conduct in registering well-known trademarks of others supports the inference that Patron registered the domain name in issue to prevent Nabisco from "reflecting the marks in corresponding domain names." Patron owns at least 53 domain names identical or virtually identical to registered U.S. trademarks of other companies, such as Nestle, General Mills, Nabisco, AT&T, Pfizer, Proctor & Gamble, and Warner-Lambert. These domain names are listed in Annex C to the complaint.
In its complaint, Nabisco requests that the ownership of the domain name in issue be transferred to Nabisco.
c. The Response
In its February 8, 2000 response to the complaint, Patron avers the following:
Paragraph 7 re Ground (A) -- The domain names in issue are "not identical" to Nabisco’s "corresponding trademarks, as confirmed’ by Nabisco. Furthermore, "they are not ‘famous’ names."
Paragraph 7 re Ground (B) --"Most" of Nabisco’s trademarks "have meaning outside of their trademarks. For example, Bettercheddars.com could represent a website for a large cheese or cheddar producing firm in Wisconsin."
Patron states further:
"If the arbitrator feels that some of the above names are in true conflict to Ground (B), the respondent is willing to sell back the domain names to the complainant at the cost paid."
Patron repeats that it "feels that most of the domain names above have meaning outside of the complainant’s description above."
Paragraph 7 re Ground (C)(i) -- Patron avers:
"The respondent was solicited and asked to sell some of the domain names in question. The respondent set a price for selling some of the domain names back to the complainant to cover out-of-pocket costs directly related to selling and transferring the domain names to the respondent. The complainant did not accept these terms."
Patron further avers that Nabisco solicited the domain names from Patron "to build a case against" Patron. Patron states also:
"We felt that this was a fair price to pay for our time and costs associated with selling and transferring the names."
Paragraph 7 re Ground C(ii) -- Patron avers:
"The domain names are not identical to the complainant’s trademarks; therefore this is a mute [sic] comment."
Patron alleges that 13 of the domain names on Nabisco’s Annex C list of 53 domain names were not purchased by Patron, although they were "held" by Patron. Patron alleges further:
"The respondent has not been contacted by any of the other companies listed in the other 40 names on this list. Therefore, the respondent feels that this list cannot be used for a ground of complaint."
Patron requests that Patron "retain ownership of the domain names." Patron continues:
"If the arbitrator feels that some of the domain names are in conflict with the trademarks of the complainant, the respondent is willing to transfer those names at a reasonable expense. The expense should cover costs associated with transfer, purchase and legal process/time associated with each domain."
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Nabisco must prove, with respect to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to the corresponding Nabisco trademark, and
(ii) Patron has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Identity or Confusing Similarity
Nabisco urges only "virtual" identity. It does not urge confusing similarity. Thus, Nabisco must prove that the domain names in issue are "identical’ to its corresponding trademarks.
On its face, each domain name in issue is for purposes of this dispute identical to the corresponding Nabisco trademark. Patron’s naked assertion that the domain names are not identical to the corresponding trademarks "as confirmed by the complainant" is not credible. Moreover, whether or not any of the marks is a "famous" name is not relevant here, and Patron’s unsupported assertion that they are not "famous" names carries no weight.
b. Rights or Legitimate Interests
On this record, Patron’s unsupported assertions are more than countered by the undisputed facts and the circumstantial evidence. Patron levels no challenge to (1) validity of any of the Nabisco trademarks, (2) Nabisco’s rights in those marks with respect to Nabisco goods, (3) the goodwill associated with those marks, or (4) any fact averred by Nabisco as to the use of the marks and total sales of goods under the marks. Patron does not deny Nabisco’s assertion that Patron has no active website under any of the domain names in issue.
Patron’s assertions that (1) "most" of the domain names in issue "have meaning outside their trademarks," and (2) "Bettercheddars.com" "could" represent a website for a large cheese or cheddar producing firm in Wisconsin are no more than wishful fantasizing. They can not undercut the undisputed facts or the inferences compelled by the circumstantial evidence.
Among the additional relevant facts and circumstances are:
(1) Patron concededly "owns" 40 domain names. Nabisco’s list of more than 50 domain names associated with Patron, reveals many well-known terms used by well-known global companies to denote their products and services -- ranging across many categories of goods and services. Patron’s asserted ownership of 40 well-known terms readily suggests more than coincidence in Patron’s selection of those domain names. Rather, it suggests a studied selection of domain names for the purpose of profiting from activities other than maintaining 40 active websites for providing goods and services in commerce.
(2) This record supports the inference that it is highly unlikely that Patron could legitimately use each of the 40 domain names it assertedly owns in providing goods and services in commerce. On this record, none of the domain names in issue is used in connection with an active website. Patron has adduced no evidence that any of its other 40 domain name registrations is used in connection with an active website. Patron’s conduct in acquiring such domain names suggests strongly that Patron intended and continues to intend to profit from sales of Patron’s rights in those domain names. Patron’s offers in its response (paragraphs 7 and 8) to "sell back" or "transfer" the domain names to Nabisco "at the cost paid" or "at a reasonable expense" is entirely consistent with this inference. But Patron cannot unilaterally anoint itself as Nabisco’s agent for the acquisition of domain names -- at any price.
(3) If Patron legitimately intended to use the domain names in issue here for any purpose other than to sell them at a profit, Patron could easily have adduced evidence in support of such. Patron’s admitted ownership of 40 domain names of the kind here in issue gives rise to an inference which calls on Patron to adduce evidence to counter the inference.
(4) In August 1999, Patron was willing to sell three domain name in issue to Nabisco for US$6900. This willingness at this price is inconsistent with Patron’s having a legitimate interest in using any of the domain names as an active website to provide goods and services in commerce. An active, legitimate website should produce revenues far in excess of $2300.
c. Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. There is no evidence that any domain name in issue has in fact been used in commerce in connection with an active website by Patron. Indeed, Patron does not dispute Nabisco’s assertion that Patron "does not have an active website under any of the complained of domain names." (Complaint, paragraph 9(B))
Patron’s real purpose in acquiring the domain name in issue is revealed in the August 02, 1999 email from Hans Swildens, viz.:
"To make a profit on the work, we need to charge this amount [$2300] per name."
The email continues:
"Since you have three names you could purchase, the process can be duplicated and we might be able to save some costs. Therefore a purchase price of $6,900 for three names sounds reasonable. If you accept these terms, I can have a contract drafted and emailed to you."
These are not the proposals or prices of a proprietor of a commercial website who is selling a commercial address of value intrinsic to the proprietor.
Moreover, in addition to the owners of trademarks mentioned in Nabisco’s complaint, other owners of trademarks "identical or virtually identical" to domain names allegedly registered to Patron, or in 13 additional instances once concededly "held" by Patron, include MCI, Merrill Lynch, Hershey Foods, Kraft General Foods, Clorox, Colgate-Palmolive, Ralston Purina, and Revlon (Annex C to the complaint).
Manifestly, it is fair to infer that Patron’s real business is to acquire domain names and to sell them for profit. Nabisco’s exemplary list of domain names identified with Patron (Annex C to the complaint) implies strongly that Patron’s policy and practice are to trade on the value of the marks it has registered as domain names by way of selling the domain names to the long-time owners of the marks or by otherwise interfering with the owners’ rights to use their marks in commerce. Indeed, in addition to offering three of the domain names in issue to Nabisco "to make a profit," Hans Swildens’ email of August 02, 1999 to Mrs. Gallagher of Nabisco, asserted "we sold two domains to another company for $5,000 each to cover our costs and make it a profitable transaction." Significantly, Mr. Swildens’ email of August 02, 1999, is entirely silent with regard to any consideration for Patron’s lost opportunity to use the domain names as its own commercially active websites.
It does not avail Patron to aver that none of the owners of the 40 trademarks corresponding to Patron’s domain names has contacted Patron. This averment is silent as to (1) the owners of the 13 domain names once "‘held’ by The Patron Group but never purchased," and (2) whether Patron, or a Patron representative, has initiated contacts with any of the owners of the other 40 domain names. What ever the facts as to "contacts", the inference of bad faith is unaffected.
Finally, Patron does not deny Nabisco’s allegation that Patron registered the domain names in issue to prevent Nabisco from "reflecting the marks in corresponding domain names." All that Patron can muster on this score is the contention that, because the domain names in dispute and the corresponding trademarks are not identical (in Patron’s view), Nabisco’s allegation is "mute [sic]."
Thus, this record reveals only evidence of Patron’s intent to use and to profit from its alleged registrations of at least 40 domain names simply and only by sales at a profit to others.
d. Paragraph 4.c. Factors
With respect to each domain name in issue, Patron has failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:
(i) before any notice to Patron of the dispute, Patron’s use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,
(ii) Patron or a related entity has been commonly known by the domain name, and
(iii) Patron is making 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."
In light of the foregoing, the Panel decides that (a) the five domain names registered by Patron and in issue here are identical to the five corresponding trademarks of Nabisco, (b) Patron has no legitimate interests in respect of any of the domain names, and (c) each domain name in issue has been registered and is being used in bad faith by Patron.
Accordingly, the Panel requires that the registration of each of the domain names in issue be transferred to Nabisco. The domain names are:
"harvestcrisps. com", and
Even if the Panel had authority to grant the relief proposed by Patron, i.e. selling back or transferring names to Nabisco in return for payment by Nabisco to Patron, the Panel finds that Patron has made no showing to warrant any such payment.
David W. Plant
Dated: February 23, 2000