Sunkist Growers, Inc. v. New York Project

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.

7. Decision

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

Sole Panelist

Dated: May

8, 2001

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