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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chef America, Inc. v. Sean Murray
Case No. D2000-1481
1. The Parties
The Complainant is Chef America, Inc., a corporation organized under the laws of the State of California with its principal place of business located in Englewood, Colorado, USA.
The Respondent is Sean Murray, an individual whose contact information provides an address located in New York, New York, USA.
2. The Domain Name and Registrar
The disputed domain name is <hot-pockets.com>.
The registrar of the disputed domain name is Network Solutions, Inc. with a business address in Herndon, Virginia, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 30, 2000.
3.2 On November 23, 2000, WIPO advised the Complainant of deficiencies in its complaint relating to mutual jurisdiction under Network Solutions’ 4.0 Service Agreement and requested Complainant submit an amended complaint.
3.3 On November 28, 2000, Complainant submitted amendments to its complaint pursuant to WIPO’s request.
3.4 On December 1, 2000, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.5 On December 1, 2000, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.6 On December 22, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint.
3.7 On January 30, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 30, 2001, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.8 On January 31, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 14, 2001.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant Chef America owns the following trademarks and services marks:
(a) HOT POCKETS (Stylized)
U.S. Registration No.: 1,271,973
Issued: March 27, 1984
Goods: "pre-cooked, ready-to-eat, frozen bread having a fruit, meat, cheese and/or vegetable filing."
U.S. Registration No.: 2,151,684
Issued: April 21, 1998
Goods: "pre-cooked, ready-to-eat, frozen bread having a fruit, meat, cheese and/or vegetable filing."
(c) HOT POCKETS PIZZA MINIS
U.S. Registration No. 2,257,960
Issued: June 29, 1999
Goods: "pastries having a filing of meat, cheese, vegetables, fruit, individually and with combinations of the foregoing filings."
4.2 Complainant has also registered its HOT POCKETS mark in a variety of countries, including: (a) Indonesia (Reg. No. 329253); (b) Hong Kong (Reg. No. B5447/94); (c) Mexico (Reg. No. 409540); (d) Philippines (Reg. No. 57434); and (e) Thailand (Reg. No. TM48348).
4.3 The Network Solutions’ WHOIS database indicates that Respondent registered the domain name <hot-pockets.com> on August 25, 1999.
5. Parties’ Contentions
"Complainant introduced its first line of refrigerated meat and cheese stuffed sandwiches under the HOT POCKETS® trademark in 1982, distributing the product in "foodservice" trade channels such as convenience stores, vending machines and schools. See Young Decl. at ¶ 3. By 1984, HOT POCKETS® brand stuffed sandwiches were being distributed on a national basis, including in customary retail trade channels. Id. Subsequent to the introduction of HOT POCKETS products, Complainant introduced other products bearing the POCKETS mark, including LEAN POCKETS and CROISSANT POCKETS."
"Since 1984, Complainant has expended considerable sums of money to develop consumer name recognition for its HOT POCKETS Marks. Young Decl. at ¶ 5. During that time frame, Complainant has extensively advertised its HOT POCKETS Marks in print and broadcast media. Id. For example, in 1999 alone, Complainant spent more than $6 million on advertising specifically devoted to its HOT POCKETS products, and it spent over $16 million altogether in advertising its POCKETS products generally. Id."
"These advertising efforts, in combination with the high quality of Complainant’s HOT POCKETS products, have resulted in substantial sales. In 1999, Complainant enjoyed more than $293 million in gross sales of HOT POCKETS products. Young Decl. at ¶ 6. Forecasted gross sales for HOT POCKETS products for the year 2000 are at least $318 million. Id."
"Complainant’s products are popular among children, and Complainant enjoys substantial sales of its HOT POCKETS products to families with children. Young Decl. at ¶ 7. In addition, HOT POCKETS products are frequently sold in school cafeterias and school vending machines, further increasing the exposure of HOT POCKETS products among children. Id."
"[T]he HOT POCKETS Marks have become extremely famous and well-known. Evidencing the widespread consumer recognition of these products is a 1999 study performed by the market research firm of Ross Cooper Lund. This study found that approximately 88% of United States households were aware of the HOT POCKETS brand. Young Decl. at ¶ 10. Further, A.C. Neilsen household panel data shows that more than 14% of United States households actually had purchased HOT POCKETS products in the year 1999. Id."
"The domain name <hot-pockets.com> is identical and confusingly similar to Complainant’s HOT POCKETS Marks. The addition of a hyphen is not significant in relation to the original mark."
"The Respondent has no rights or legitimate interests with respect to the domain name because * * * Complainant’s first uses and first registrations of its HOT POCKETS Marks predate any use Respondent may have made of "hot-pockets" as a tradename, domain name, or mark. Any use by Respondent would have taken place only after Respondent had knowledge of Complainant’s introduction of its HOT POCKETS products."
"Respondent’s domain name was registered on August 25, 1999, more than 17 years after Complainant’s first use of the mark HOT POCKETS and more than 15 years after it obtained its registration for the HOT POCKETS (Stylized) mark (Reg. No. 1,271,973). Respondent’s domain name registration also post-dates Complainant’s first uses and registrations of the HOT-POCKETS mark (Reg. No. 2,151,684) and the HOT POCKETS PIZZA MINIS mark (Reg. No. 2,257,960)."
"Complainant reasonably believes that Respondent, prior to its adoption and use of the domain name <hot-pockets.com> was aware that Complainant was the owner of the HOT POCKETS Marks because of Complainant’s widespread and long-standing promotion, marketing, and distribution of HOT POCKETS products."
"On information and belief, by registering and using the <hot-pockets.com> domain name, Respondent is intentionally seeking, for his commercial gain, to promote his website and to attract Internet users to his web site by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website."
"On information and belief, Respondent has registered the <hot-pockets.com> name in order to prevent Complainant’s ability to register a corresponding domain name."
"On information and belief, Respondent has engaged in a pattern of such behavior. In addition to the domain name at issue in this Complaint, Respondent has obtained domain name registrations for the following domain names: (a) <pgatrip.com>; (b) <nbatrip.com>; and, (c) <nfltrip.com>."
"Although these domain name registrations list contact information that is different from that which is provided in the <hot-pockets.com> registration, Complainant notes that the domain server information listed in the <pgatrip.com>, <nbatrip.com>, and <nfltrip.com> registrations is highly similar to the server information provided in a registration for the domain name <seanmurray.com>, a copy of which is attached hereto as Exhibit G. The e-mail contact address listed for <seanmurray.com> -- email@example.com -- is the same contact address as that provided for the <hot-pockets.com> registration at issue in this action. If Respondent is indeed obfuscating his contact information, this act may constitute another level of bad faith."
"Respondent’s use of the <hot-pockets.com> domain name also has the effect of tarnishing Complainant’s famous HOT POCKETS Marks. The <hot-pockets.com> name leads Internet users to a website bearing the caption "Midget Porn Outlet," featuring a dialogue between two individuals, one of whom characterizes <hot-pockets.com> as "The Web’s Premiere Midget Porn Site." The site also contains a "disclaimer" that reads as follows: "hot-pockets.com does not support the sale of midgets for sexual favors. although we think it’s damn funny".
"This issue is of particular concern to Complainant given the popularity of HOT POCKETS products among children. See Young Decl. at ¶ 7."
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 WIPO forwarded notification of the complaint to the Respondent and his separate technical contact via courier, facsimile (technical contact only), and email. Currently the <hot-pockets.com> domain name resolves to a default screen operated by the technical contact.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and the subsequent use of a default screen by the Respondent’s technical contact, who was also notified of the complaint, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 Complainant asserts that the domain name <hot-pockets.com> is identical and confusingly similar to Complainant’s registered HOT POCKETS marks.
6.7 As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, D2000-0009, February 29, 2000.
6.8 The Panel finds that the <hot-pockets.com> domain name is identical and confusingly similar to the HOT POCKETS marks, and that the Complainant has established it has rights in the name "HOT POCKETS," pursuant to paragraph 4(a)(i) of the Policy. Use of a hyphen in Respondent’s domain name is of no consequence. SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131, April 13, 2000.
6.9 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] 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.
6.10 The length of time the mark has been used, the amount of advertising conducted and the popularity of Complaint’s products sold under the registered HOT POCKETS mark leads to the conclusion that Respondent was or certainly should have been aware of the mark prior to registering the domain name. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000.
6.11 In addition, Respondent’s previous use of <hot-pockets.com> resolving to a website bearing the caption "Midget Porn Outlet" tarnished or over time could have tarnished Complainant’s HOT POCKETS mark.
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <hot-pockets.com>.
6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <hot-pockets.com>, pursuant to paragraph 4(a)(ii) of the Policy.
6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
6.15 The Panel has already accepted Complainant’s assertion that Respondent knew or should have known of the Complainant’s trademarks at the time it registered the domain name <hot-pockets.com>.
6.16 In the absence of contrary evidence, awareness of the Complainant’s mark coupled with Respondent’s use of the domain name to resolve to a website bearing the caption "Midget Porn Outlet," is evidence of registration and use in bad faith. CCA Industries, Inc. v. Bobby R. Dailey, WIPO D2000-0148, April 26, 2000; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO D2000-0256, June 7, 2000.
6.17 The Panel finds that the Respondent used <hot-pockets.com> to intentionally misdirect Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Therefore, the Panel finds the Complainant has established that the Respondent registered and used the domain name <hot-pockets.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
6.18 On the record before it the Panel will not decide whether the Respondent has engaged in a pattern of registering domain names or whether the Respondent has provided false or incomplete contact information.
As the Complainant, Chef America, Inc., has established that the Respondent, Sean Murray, has engaged in abusive registration of the domain name <hot-pockets.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <hot-pockets.com> be transferred to the Complainant.
R. Eric Gaum
Dated: February 13, 2001