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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

V&V Supremo Foods, Inc. v. pxlchk1@gmail.com

Case No. D2006-1373

 

1. The Parties

The Complainant is V&V Supremo Foods, Inc., of Chicago, Illinois, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.

The Respondent is pxlchk1@gmail.com, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <1888vvsupremo.com> is registered with New Dream Network, LLC dba DreamHost.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2006. On October 30, 2006, the Center transmitted by email to New Dream Network, LLC dba DreamHost.com a request for registrar verification in connection with the domain name at issue. On October 30, 2006, New Dream Network, LLC dba DreamHost.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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 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 proceedings commenced on November 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2006.

The Center appointed Lynda M. Braun as the sole panelist in this matter on January 8, 2007. 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, V&V Supremo Foods, is an Illinois corporation having its place of business in Chicago, Illinois. The Complainant has been in business since 1964, and was founded by two brothers with the surname “Villseсor”, thus the name V&V. Over the years, the Complainant’s business has expanded to include the manufacturing and supply of food products, such as cheeses, sour creams, sausage products and related goods. The Complainant’s goods are sold in retail stores, including chain stores and independent retailers, and restaurants.

The Complainant owns the V&V SUPREMO and Design mark, U.S. Registration No. 1,928,829, for various food products (“V&V SUPREMO mark”). The registration was granted on October 24, 1995 based on the first use date of January 31, 1984.

The Complainant also uses the domain name <vvsupremo.com> and toll-free telephone number 1-888-VVSUPREMO to promote its business.

The Respondent corresponds to the email address pxlchk1@gmail.com. The same email information is provided with respect to the Administrative Contact, the Technical Contact, and the Billing Contact. The WHOIS database does not provide a mailing address.

 

5. Parties’ Contentions

A. Complainant

The following are the allegations made by the Complainant in this proceeding:

The Complainant’s V&V SUPREMO mark for the goods identified in the registration has reached incontestable status under Section 15 of the Lanham Act, 15 U.S.C. § 1065.

The Complainant’s V&V SUPREMO mark is displayed prominently on its packaging and advertising and promotional materials.

The Complainant enjoys considerable consumer recognition and goodwill, and the Complainant’s V&V SUPREMO mark has become a symbol of the Complainant’s various products and goodwill.

The Respondent registered the disputed domain name <1888vvsupremo.com>.

The Respondent linked the disputed domain name <1888vvsupremo.com> to a hard-core pornographic website to harm the Complainant and its business reputation.

The pornographic website that the disputed domain name links to is <farmjoy.com>.

Tracey L. Giertz, Senior Trademark Paralegal at Brinks Hofer Gilson & Lione, submitted a Declaration stating that she went to the disputed domain name <1888vvsupremo.com> and it immediately brought her to <farmjoy.com>.

The Complainant attempted to resolve the matter amicably by sending the Respondent a cease and desist letter, but the Respondent never responded.

The Respondent is not affiliated with the Complainant, and does not have a license or other authorization to use the Complainant’s V&V SUPREMO mark.

The disputed domain name is confusingly similar to the Complainant’s V&V SUPREMO mark and identical to the Complainant’s toll-free telephone number.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):

(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 right or legitimate interest in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complaint shows that the Complainant has valid and well-established exclusive rights in its V&V SUPREMO mark. The Complainant possesses a valid federal trademark registration, uses its V&V SUPREMO mark to offer its business-related products and services, and has expended significant resources to promote its V&V SUPREMO mark. See generally MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204. The Complainant also has established common law rights in the word mark V&V SUPREMO based on its use of these words alone on its products, on its website, as its domain name <vvsupremo.com>, and as its toll-free telephone number 1-888-VVSUPREMO. See Askonas Holt Ltd v. Webocracy Inc., WIPO Case No. D2000-0392 (common law trademarks are protected under the Policy).

As numerous courts and prior WIPO UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of descriptive or non-distinctive terms in the domain name does not affect a finding that a domain name is confusingly similar to the Complainant’s registered trademark.

The Panel finds that the Respondent’s <1888vvsupremo.com> domain name is confusingly similar to the Complainant’s V&V SUPREMO mark. The disputed domain name incorporates the entirety of the Complainant’s V&V SUPREMO mark and the only difference between the disputed domain name and the Complainant’s V&V SUPREMO mark lies in the addition of the numbers “1888” before the Complainant’s V&V SUPREMO mark and the addition of the gTLD after it. The addition of such generic numbers to a complainant’s mark is not sufficient to escape a finding of similarity when a disputed domain name otherwise wholly incorporates a complainant’s mark. See, e.g., PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks). Indeed, the phrase “1888” is descriptive and non-distinctive because it is commonly used for toll-free numbers in the United States of America. RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (use of “1-800”, “1-888”, and “1-877” was descriptive and did not distinguish respondent’s domain names from complainant’s marks). Finally, it is well-established that the addition of the phrase “.com” is “non-distinctive because it is a gTLD required for registration of a domain name”. Id. The Panel therefore concludes that the disputed domain name <1888vvsupremo.com> is identical or confusingly similar to the Complainant’s V&V SUPREMO mark in which the Complainant has valid and exclusive rights.

B. Rights or Legitimate Interests

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to a complainant’s mark, and has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain name, the burden shifts to the respondent to establish some rights or legitimates interest with respect to the domain name. Sony Kabushiki Kaisha a/t/a Sony Corporation v. sony.net, WIPO Case No. D2000-1074. The Panel noting that that the Complainant has not authorized the Respondent to use the V&V SUPREMO mark, finds that the Complaint has made such a prima facie case, which the Respondent has not answered.

The Respondent has not shown that it has made any bona fide commercial use or any legitimate non-commercial or fair use of the disputed domain name without any intent either for commercial gain or to mislead or divert consumers or tarnish the trademark at issue. The Complainant states in the Complaint, and submits evidence in its schedule of annexes to the Complaint, that the disputed domain name <1888vvsupremo.com> immediately linked consumers to the pornographic website <farmjoy.com>. It appears from the evidence provided that the disputed domain name <1888vvsupremo.com> was apparently used as a link to a pornographic website, with no evidence of a bona fide offering of goods and services, a business name, or use of <1888vvsupremo.com> in the normal course of business. See Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0822 (using disputed domain name as link to pornographic website that had to be paid for was commercial use and not legitimate interest). Rather, the disputed domain name appears to have been used to damage the Complainant and its business reputation. Such tarnishing use has no justification and is not consistent with any legitimate interest in the domain name on the part of the Respondent. See Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick, WIPO Case No. 2003-0002 (“The domain name is thereby used with intent for commercial gain to misleadingly divert consumers and to tarnish the trademark at issue”).

However, when the Panel tried to type in the disputed domain name prior to drafting this decision, it discovered that the website has been changed so that it now links to:

“pww.org/past-weeks-2001/Striking%20food%20workers%20rally%20against%20goons.html”. There is an article posted on this new linked-website that discusses the Complainant, but the Respondent has not demonstrated any reason as to why the link was changed following the filing of the Complaint. The disputed domain name incorporating the Complainant’s V&V SUPREMO mark is now apparently being used to attract consumers to an article criticizing the Complainant, although the content of the article is not present on the “www.1888vvsupremo.com” website – it remains as a link to another site.

The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by <1888vvsupremo.com>, that the Respondent possesses any trademark or service mark rights in the disputed domain name <1888vvsupremo.com>, or that the Respondent has other authority or permission to use the Complainant’s V&V SUPREMO mark. Indeed, the Complainant states expressly that the latter is not the case See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the disputed Domain Name. Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no right or legitimate interest in the domain name).

Therefore, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

First, in view of the circumstances the Panel infers the Respondent’s bad faith intent from the Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210. The Respondent’s apparent failure to answer the Complainant’s cease and desist letter is a further indication of bad faith. See, e.g., GMI Sound Corporation v. Fitzpatrick Brothers Studios, WIPO Case No. D2005-0204.

Second, the Respondent’s use of the disputed domain name <1888vvsupremo.com> to divert consumers to a pornographic website is evidence of bad faith. See Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (“the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (use of the complainant’s mark as part of domain name offering pornographic goods and services tarnishes mark and is evidence of bad faith).

Third, instead of responding to the Complainant’s cease and desist letter or this Complaint, the Respondent appears to have changed the website at the disputed domain name to divert consumers to an article criticizing the Complainant. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith).

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <1888vvsupremo.com>, be transferred to the Complainant.


Lynda M. Braun
Sole Panelist

Dated: January 22, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1373.html

 

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