Sunkist Growers, Inc. v. SG and Delmonte-Asia.com

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Sunkist

Growers, Inc. v. S G and Delmonte-Asia.com

Case No.

D2001-0432

1. The Parties

The Complainant is Sunkist

Growers, Inc., a corporation organized and existing under the laws of California

with a place of business at 720 E. Sunkist Street, Ontario,

California 91761-0993, U.S.A.

The Respondent S G

("First Respondent") is an entity with an address at Igokdong

Dalseogu, Daegu, 704-140, Korea. The Respondent Delmonte-Asia.com ("Second

Respondent") is an entity with an address at Melrose avenue (sic),

Denber (sic), CO 90038, U.S.

2. The Domain Names

and Registrar

The contested domain

names are <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com>.

The registrar is Network

Solutions, Inc.

3. Procedural History

The electronic version

of the Complaint was filed on March 27, 2001. The hardcopy of the Complaint

was received on March 28, 2001.

In accordance with

Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy

("ICANN Rules") and Paragraph 5 of the Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"),

the Center verified that the Complaint satisfies the formal requirements

of the ICANN Policy, ICANN Rules and Supplemental Rules.

On April 6, 2001, the

Center formally notified the Respondents by post/courier and email of the

Complaint and of the commencement of this administrative proceedings and

sent copies to the Complainant, the Registrar and ICANN. The couriers to

the Respondents were returned to the Center on April 13, 2001 and April

18, 2001.

The Respondents failed

to file a Response. On April 27, 2001, the Center sent a Notification of

Respondent Default by email to the Respondents and the Complainant. The

emails to the Respondents at onetz@kebi.com and registrar@kebi.com were

successfully transferred.

The Center contacted

John Swinson and requested that he act as panelist in this case. Mr. Swinson

accepted to act as panelist in this case and submitted a Statement of Acceptance

and Declaration of Impartiality and Independence.

On May 8, 2001, the

parties were notified that Mr. Swinson had been appointed and that a decision

was to be, save exceptional circumstances, handed down on May 22, 2001.

The language of the

proceeding is English.

The panel is satisfied

that the Complaint was filed in accordance with the requirements of the

ICANN Rules and th WIPO Supplemental Rules; payment was properly made; the

panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Complaint was properly notified to the

Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response

was filed by the Respondents; the administrative panel was properly constituted.

4. Factual Background

The Complainant owns

the following U.S. trademark registrations for marks containing the term

SUNKIST:

● Registration

No. 2435807 for the trademark SUNKIST;

● Registration

No. 2419996 for the trademark SUNKIST;

● Registration

No. 2413128 for the trademark SUNKIST;

● Registration

No. 2403459 for the trademark SUNKIST PREMIUM FLOWERS;

● Registration

No. 2373964 for the trademark SUNKIST;

● Registration

No. 2339263 for the trademark SUNKIST;

● Registration

No. 2230934 for the trademark DIET SUNKIST;

● Registration

No. 2230933 for the trademark DIET SUNKIST;

● Registration

No. 2229121 for the trademark SUNKIST;

● Registration

No. 2229120 for the trademark SUNKIST;

● Registration

No. 1970578 for the trademark SUNKIST;

● Registration

No. 1970577 for the trademark SUNKIST;

● Registration

No. 1967441 for the trademark SUNKIST;

● Registration

No. 2042206 for the trademark SUNKIST;

● Registration

No. 1867732 for the trademark SUNKIST JUICE BITES;

● Registration

No. 1828990 for the trademark SUNKIST;

● Registration

No. 1772513 for the trademark SUNKIST;

● Registration

No. 1692224 for the trademark SUNKIST;

● Registration

No. 1171525 for the trademark DIET SUNKIST;

● Registration

No. 1142793 for the trademark SUNKIST;

● Registration

No. 1383543 for the trademark SUNKIST FUN FRUITS;

● Registration

No. 1614130 for the trademark SUNKIST;

● Registration

No. 1614129 for the trademark DIET SUNKIST;

● Registration

No. 1599804 for the trademark DIET SUNKIST;

● Registration

No. 1598865 for the trademark SUNKIST;

● Registration

No. 1372857 for the trademark SUNKIST;

● Registration

No. 1372894 for the trademark SUNKIST;

● Registration

No. 1260159 for the trademark SUNKIST;

● Registration

No. 1261871 for the trademark DIET SUNKIST;

● Registration

No. 1224371 for the trademark SUNKIST;

● Registration

No. 1215135 for the trademark SUNKIST;

● Registration

No. 1243278 for the trademark SUNKIST;

● Registration

No. 1188841 for the trademark SUNKIST;

● Registration

No. 1001161 for the trademark SUNKIST;

● Registration

No. 1001160 for the trademark SUNKIST;

● Registration

No. 1001158 for the trademark SUNKIST INVITATIONAL;

● Registration

No. 0726900 for the trademark SUNKIST;

● Registration

No. 0924836 for the trademark SUNKIST;

● Registration

No. 0878962 for the trademark SUNKIST;

● Registration

No. 0808069 for the trademark SUNKIST;

● Registration

No. 0599437 for the trademark SUNKIST;

● Registration

No. 0578492 for the trademark SUNKIST; and

● Registration

No. 0563438 for the trademark SUNKIST.

The domain names <sunkistgrowers.org>

and <sunkistgrowers.net> currently resolve to a single webpage regarding

"Sun Korean International Science Technology Growers". The webpage

does not contain any links to any other webpages. The email contains a link

that generates an email addressed to registrar@kebi.com.

The domain name <sunkistasia.com>

currently resolves to a single placeholder webpage displaying a message

that it is "the future home of… www.sunkistasia.com".

5. Parties’ Contentions

A. Complainant

Complainant is an agricultural

marketing cooperative which is engaged in the business of marketing fresh

citrus fruit and processed citrus products throughout the world. It is the

successor in interest, by change of name, to the California Fruit Growers

Exchange, a cooperative of fruit growers, which was organized in 1905. Complainant

has used the mark SUNKIST as a trademark since as early as 1908 in connection

with the marketing and sale of its fruit, and Complainant first licensed

the use of its SUNKIST mark as early as 1957. In 1952, the California Fruit

Growers Exchange officially changed its name to Sunkist Growers, Inc. to

associate the brand name with the corporate organization. Since that time,

Sunkist Growers, Inc. has been used continuously to date to identify Complainant.

Complainant is the

owner of 53 U.S. trademark and service mark registrations for the term SUNKIST

either alone and/or in combination with another word(s), design(s), etc.

Complainant owns trademark and service mark applications and registrations

of the term SUNKIST either alone and/or in combination with another word(s),

design(s), etc., in over 150 countries, including 19 registrations and 1

application in South Korea.

Complainant markets

its products throughout the world and always uses its trade name SUNKIST

GROWERS in such promotion.

Complainant is the

owner of the domain names <sunkistgrowers.com>, <sunkist.com>,

<sunkist.net>, <sunkist.org>, and <sunkist-ppd.com> and

many other domain names for sunkist with country endings throughout the

world. Complainant operates a website at <sunkist.com>.

By virtue of the Complainant’s

extensive and long use, advertising, promotion and sale of its goods and

services throughout the United States and the world, Complainant’s SUNKIST

marks and SUNKIST GROWERS trade name have become well-known and famous in

the United States and abroad as an indicia of origin for Complainant’s goods

and services.

The Complainant contends

that the First Respondent and the Second Respondent are one and the same

entity. The Complainant observed that the contact details and domain name

servers contained in the WHOIS database for <sunkistasia.com> are

practically identical to the WHOIS information provided when the First Respondent

registered the domain names <sunkistgrowers.net> and <sunkistgrowers.org>.

The addresses of the registrants, the administrative, billing and technical

contacts, the telephone numbers and the domain name servers were identical.

The original administrative and billing contact for <sunkistgrowers.net>

and <sunkistgrowers.org>, Sean Bay, remains the administrative and

billing contact for the domain name <sunkistasia.com>.

In relation to the

First Respondent’s domain names, <sunkistgrowers.net> and <sunkistgrowers.org>,

the Complainant contends that:

(a) the domain

names are identical to and confusingly similar to the Complainant’s

trade name SUNKIST GROWERS and confusingly similar to the Complainant’s

trademark and service mark SUNKIST;

(b) the First

Respondent has no rights or legitimate interests in the domain names

as the First Respondent has made no use of the domain names for an

active site; on the Complainant’s information and belief, the First

Respondent would have had actual notice of the Complainant’s ownership

of the name SUNKIST and name SUNKIST GROWERS at the time that the

First Respondent registered the domain names; the original administrative

and billing contact for the domain names is the listed contact for

a number of other domain names containing other famous trademarks;

and

(c) the First

Respondent registered the domain names in bad faith as the First Respondent

provided a fictitious address when registering the domain names; the

First Respondent’s address and the administrative, billing and contact

addresses listed in the WHOIS database for the domain names were changed

after the Complainant contacted the First Respondent; the original

administrative and billing contact for the domain names is the listed

contact for a number of other domain names containing other famous

trademarks; when negotiating the sale of the domain names, the First

Respondent estimated its expenses at $7,000, a sum which the Complainant

contends is obviously not correct since the domain names simply link

to a pre-existing unrelated site.

In relation to the

Second Respondent’s domain name, <sunkistasia.com>, the Complainant

contends that:

(a) the domain

name is confusingly similar to the Complainant’s trademark and service

mark SUNKIST and confusingly similar to the Complainant’s trade name

SUNKIST GROWERS;

(b) the Second

Respondent has no rights or legitimate interests in the domain name

as the Second Respondent has made no use of the domain name for an

active site; on the Complainant’s information and belief, the Second

Respondent would have had actual notice of the Complainant’s ownership

of the name SUNKIST and name SUNKIST GROWERS at the time that the

Second Respondent registered the domain name; and

(c) the Second

Respondent registered the domain name in bad faith as the Second Respondent

provided a fictitious address when registering the domain name; the

administrative and billing contact for the domain name is the listed

contact for a number of other domain names containing other famous

trademarks; the domain name has never resolved to an active website.

B. Respondent

The Respondents failed

to file a Response within the time limit set by the Center.

In accordance with

Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis

of the Complaint alone.

6. Discussion and

Findings

The first issue is

whether the Complainant correctly instituted a single administrative proceeding

under the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN

Policy") in relation to the three domain names.

Paragraph 3(c) of the

ICANN Rules provides that "the complaint may relate to more than one

domain name, provided that the domain names are registered by the same domain-name

holder".

The Complainant contends

that the First Respondent and the Second Respondent are one and the same

entity. The Complainant observed that the contact details and domain name

servers contained in the WHOIS database for <sunkistasia.com> are

practically identical to the WHOIS information provided when the First Respondent

registered the domain names <sunkistgrowers.net> and <sunkistgrowers.org>.

The addresses of the registrants, the administrative, billing and technical

contacts, the telephone numbers and the domain name servers were identical.

The original administrative and billing contact for <sunkistgrowers.net>

and <sunkistgrowers.org>, Sean Bay, remains the administrative and

billing contact for the domain name <sunkistasia.com>.

In this case, the panel

is satisfied that Complainant is able to institute a single administrative

proceeding under the ICANN Policy. The panel finds that the Complainant

has provided sufficient evidence to indicate that the First and Second Respondents

are the same entity. See Adobe Systems Incorporated v. Domain OZ

WIPO Case No. D2000-0057; Yahoo!, Inc. v. Somsak Sooksripanich and Others

WIPO Case No. D2000-1461.

In order to qualify

for a remedy, the Complainant must prove each of the three elements set

out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution

Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"),

namely:

(a) the domain

name is identical or confusingly similar to a trademark or service

mark in which the complainant has rights; and

(b) the respondent

has no rights or legitimate interests in respect of the domain name;

and

(c) the domain

name has been registered and is being used in bad faith.

The onus of proving

these elements is that of the Complainant.

6.1 Identical

or confusingly similar to a trademark or service mark

The panel finds that

the Complainant is the owner of the registered trademark SUNKIST and a number

of other registered trademarks containing the word SUNKIST. The panel finds

that the Complainant is also the owner of the common law trademark SUNKIST

GROWERS through the Complainant’s substantial use of the mark throughout

the world.

The panel finds that

the domain names <sunkistgrowers.net> and <sunkistgrowers.org>

are identical to the Complainant’s trade name and common law trademark SUNKIST

GROWERS and are confusingly similar to the Complainant’s registered trademarks

listed above.

The panel finds that

the domain name <sunkistasia.com> is confusingly similar to the Complainant’s

trademark SUNKIST. The addition of the name of a place to a trademark, such

as the addition of the word "Asia" to "Sunkist", is

a common method for specifying the location of business services provided

under the trademark. The addition of a geographical location to a trademark

does not prevent the domain name from being confusingly similar to the trademark:

America Online, Inc. v. Asian On-Line This Domain For Sale Case No.

FA0004000094636; The Prudential Insurance Company of America v. J. J.

Corp Case No. FA0008000095509; America Online, Inc. v. Dolphin@Heart

WIPO Case No. D2000-0713; Texaco, Inc. v. Texaco Domain Canada Case

No. FA0005000094869; Rolls-Royce PLC v. Hallofpain WIPO Case No.

D2000-1709.

6.2 Illegitimacy

The panel finds that

the Respondents have no rights or legitimate interests in respect of the

contested domain names as:

(a) there

is no evidence of the Respondents’ use of, or demonstrable preparations

to use, the domain names or a name corresponding to the domain names

in connection with a bona fide offering of goods or services;

(b) the Respondents

have not been commonly known by the domain names;

(c) the Respondents

are not making a legitimate noncommercial or fair use of the domain

names; and

(d) the Respondents

undertook to register the domain names with full and complete knowledge

of the Complainant’s superior and prior rights.

It is highly unlikely

that the Respondents were unaware of the Complainant’s well-known trademark,

but the panel does not need to decide this dispute on that basis.

The Respondents had

the opportunity to respond and present evidence that it is a legitimate

business that registered the domain name without knowledge of the Complainant’s

rights. The Respondents chose not to do so. The Complainant is not entitled

to relief simply by default, but the panel can and does draw evidentiary

inferences from the failure to respond. See Royal Bank of Canada v. D3M

Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

Paragraph 14 of the

ICANN Rules provides that:

"(a) In

the event that a Party, in the absence of exceptional circumstances,

does not comply with any of the time periods established by these

Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party,

in the absence of exceptional circumstances, does not comply with

any provision of, or requirement under, these Rules or any request

from the Panel, the Panel shall draw such inferences there from as

it considers appropriate."

The words SUNKIST,

SUNKIST GROWERS or SUNKIST ASIA do not form any part of the Respondents’

names and the Respondents have not provided the panel with any evidence

that they are using or making preparations to use the contested domain names

in connection with a bona fide offering of goods or services.

Paragraph 4(c) of the

ICANN Policy sets out three elements, any of which shall demonstrate the

Respondents’ legitimate rights in the contested domain names. The Respondents

do not meet any of the three elements set out in this paragraph.

Accordingly, the panel

finds that the Respondents have no rights or legitimate interests in respect

of the domain names.

6.3 Bad Faith

The Complainant provided

evidence that the Complainant’s attorney contacted the First Respondent

on February 23, 2001 and advised the First Respondent that it would like

to purchase the domain names <sunkistgrowers.net> and <sunkistgrowers.org>.

The Complainant offered to pay the First Respondent’s out-of-pocket expenses

involved with the registration of the domain name to date. The First Respondent

responded to the Complainant’s attorney’s emails on February 25, 2001 and

February 26, 2001. The First Respondent stated that it would need to estimate

its costs and get back to the Complainant’s attorney. On March 6, 2001,

the First Respondent advised the Complainant that the First Respondent had

spent over $7,000 in relation to the <sunkistgrowers.net> and <sunkistgrowers.org>

domain names. A sum which the Complainant contends is obviously not correct

as the First Respondent had not created a website at that time, but merely

linked its domain names to a pre-existing, unrelated website.

At the time that the

Complainant initially contacted the First Respondent, the First Respondent

maintained that it was located at Melrose Avenue, Denber, Colorado 90038,

U.S.A. This is the same address found in the WHOIS database for the Second

Respondent. The Complainant hired a private investigator to investigate

the First Respondent. The private investigator’s report shows that the contact

details originally provided by the First Respondent were false.

On February 25, 2001,

after being contacted by the Complainant’s attorney, the information contained

in the WHOIS database for <sunkistgrowers.org> and <sunkistgrowers.net>

was changed. The First Respondent’s address was changed and the administrative,

billing and contact addresses were changed. The original email address remains

the same.

The original administrative

contact and billing contact for <sunkistgrowers.org> and <sunkistgrowers.net>

and the current administrative and billing contact for <sunkistasia.com>

is Sean Bay. The Complainant provided evidence that Sean Bay is listed as

the contact person for a number of other domain names that include famous

trademarks of other companies. These included <toshibaamerica.com>;

<sonyventure.com>; and <delmonte-asia.com>. The Complainant

also provided evidence that Sean Bay was listed as the Registrant of the

following domain names: <budweiserkorea.com>; <budweiser-korea.com>;

<budweiserasia.com>; <budweiser-asia.com>. Sean Bay is no longer

the registrant of these domain names.

The Respondents have

deliberately hidden their true identity throughout the process.

Although no single

piece of evidence provided by the Complainant on its own is sufficient to

establish that the Respondents registered and are using the domain names

in bad faith, the panel finds that all the evidence taken together is adequate

evidence of registration and use of the domain names in bad faith.

The panel finds that

the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i)

and (ii) of the ICANN Policy.

The panel finds that

the Complainant has established this element.

7. Decision

For the reasons set

forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the

Rules, the Panel orders that the contested domain names, <sunkistgrowers.net>,

<sunkistgrowers.org> and <sunkistasia.com>, be transferred to

the Complainant.

John Swinson

Sole Panelist

Dated: May

22, 2001

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