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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunkist Growers, Inc. v. New York Project
Case No. D2001-0433
1. The Parties
1.1 The Complainant is Sunkist Growers, Inc., a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 720 E. Sunkist Street, Ontario, California, United States of America.
1.2 The Respondent is New York Project, an entity having an address at Johnson Street 727, Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <sunkist-growers.net> and <sunkist-growers.com>, which are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 27, 2001, and the signed original together with four copies was received on March 28, 2001. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainant, dated March 30, 2001.
3.2 On March 30, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name(s), the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On April 2, 2001, NSI confirmed by reply e-mail that the domain names are registered with NSI, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agreed with the assessment of the WIPO Center that the Complaint was in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on April 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 22, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On April 24, 2001, not having received any Response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On May 1, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant is the owner of more than 50 trademarks and service marks registered with the United States Patent and Trademark Office (USPTO), all of which consists of the mark SUNKIST either alone or in conjunction with other words or designs. Complaint, Exhibit 1. In addition, Plaintiff has registered the SUNKIST mark in over 150 other countries.
4.2 Complainant was originally organized as a growers cooperative in 1905, and has used the SUNKIST mark continuously since at least 1908, in connection with the marketing and sale of fruit produced by the growers. Complainant incorporated under the name Sunkist Growers, Inc. in 1952.
4.3 Complainant has registered a number of domain names which use the SUNKIST mark as part of the domain name, including <sunkistgrowers.com>.
4.4 As a result of Complainant's extensive use of and promotion of the mark, Complainant's SUNKIST mark and SUNKIST GROWERS trade name are well known and famous in the United States and abroad.
4.5 On February 26, 2001, Respondent registered the domain names <sunkist-growers.net> and <sunkist-growers.com>.
4.6 To date, Respondent has not used the domain names to develop a web site. Complaint, Exhibit 5.
4.7 Complainant hired a private investigator to determine whether the information provided by Respondent to the Registrar was accurate. The results of the investigation were that the street address given was fictitious. The investigation also revealed that the telephone number provided was false and non-functioning. Complaint, Exhibit 3.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are identical to the trade name used by Complainant and confusingly similar to the trademark and service mark SUNKIST, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domain names have been registered and are being used in bad faith.
6.4 Paragraph 4(f) of the Policy provides that "[I]n the event of multiple disputes . . . either [the respondent] or the complainant may petition to consolidate the disputes before a single Administrative Panel . . .. [The Panel] may consolidate before it any or all such disputes in its sole discretion . . . ." The Panel hereby exercises its discretion to consolidate the claims concerning the two domain names at issue which both have been registered by Respondent.
6.5 The Panel finds that the domain names at issue are identical to a trade name used by Complainant and are confusingly similar to the trademark and service marks owned by Complainant.
6.6 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.7 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.
6.8 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.9 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.10 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.11 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States and throughout the world and was widely known at the time Respondent registered the domain name at issue; (2) Respondent gave a non-existent street address and telephone number for itself or its Administrative Contact in the information it supplied to the registrar; and (3) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain names at issue.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the trademark and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4.i. of the Policy, the Panel requires that the registration of the domain names <sunkist-growers.net> and <sunkist-growers.com> be transferred to the Complainant.
M. Scott Donahey
Dated: May 8, 2001