Sunkist Growers, Inc. v. May Fung

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sunkist Growers Inc v. May Fung

Caso Nº D2002- 0217

1. The Parties

The Complainant in this proceeding is Sunkist Growers, Inc. (hereinafter "Complainant"), with a place of business at 14130 Riverside Drive, Sherman Oaks, California, United States of America.

The Respondent in this proceeding is an individual called May Fung (hereinafter "Respondent") with an address at 2/F., Flat G, 2 Foo Ming St., Causeway Bay 99999 Hong Kong, SAR of China.

2. The Domain Name and Registrar

This dispute concerns the domain name <sunkist.info> (the "Domain Name").

The Domain Name was registered with the registrar in question on September 19, 2001.

The Registrar with whom the Domain Name is registered is Register.Com, 11th Avenue, New York, United States of America.

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999 was received by WIPO Arbitration and Mediation Center ("the Center") in electronic format on March 6, 2002 and in hardcopy on March 8, 2002. Payment in the required amount to the Center has been made by the Complainant.

On March 15, 2002 a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On May 1, 2002, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott.

By May 15, 2002 no response was received from the Respondent and accordingly Clive Elliott as the sole panelist issued a decision on May 15, 2002

On May 15, 2002, a decision was submitted to the Center.

4. Factual Background

The Complainant is an agricultural marketing cooperative which represents over 6,000 fruit growers and 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. The Complainant has used the mark SUNKIST as a trademark since as early as 1907 in connection with the marketing and sale of its fruit. The 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.

The Complainant is the owner of fifty-one U.S. trademark and service mark registrations for the term SUNKIST either alone and/or in combination with another word(s), design(s). Copies of these registrations taken from the U.S. Patent and Trademark Office database have been supplied ("SUNKIST marks").

The Complainant owns trademark and service mark applications and registrations for the term SUNKIST either alone and/or in combination with another word(s), design(s), in over 150 countries, including, 32 registrations in Hong Kong for the word mark SUNKIST alone. The Complainant markets its products throughout the world and always uses its trade name SUNKIST GROWERS in such promotion. The Complainant has also granted approximately 45 license agreements for the use of the SUNKIST trademark in connection with a variety of products in approximately 60 countries.

The Complainant states that it is the owner of the domain names <sunkistgrowers.com>, <sunkistgrowers.net>, <sunkistgrowers.org>, <sunkist-members.com>, <sunkist.com>, <sunkist.net>, <sunkist.org>, <sunkist-ppd.com>, <sunkistjapan.net>, and <sunkistjapan.org>, and dozens of other domain names for "sunkist" with country endings throughout the world. The Plaintiff operates a web site at <sunkist.com>.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have spent hundreds of millions of dollars in

advertising, point-of-sale promotions, customer service and research, all

in an effort to establish itself as a leader in its industry. The Complainant

also claims to spend millions of dollars annually advertising its products

on network television, on national radio, and in national print media. As

a result of the Complainant's advertising expenditures, licensing efforts

and promotional activities, it is contended that the SUNKIST trademark is

one of the most recognized names in the world.

The Complainant’s says that with extensive and long use, advertising, promotion

and sale of its goods and services throughout the United States and the

world, its 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 the

Complainant’s goods and services.

The Complainant states that on January 17, 2002, its attorney

contacted the registrant by e-mail and advised it of Complainant’s rights

in the trademark SUNKIST. The Complainant’s attorney further demanded that

the registrant assign the Domain Name to Complainant. The Complainant offered

to reimburse the Respondent for its registration fees for the Domain Name.

The Respondent failed to respond to this email. It is then said that the

Complainant’s attorney contacted the Respondent again on January 25, 2002.

The Respondent answered this second communication on January 28, 2002

and inquired as to the amount the Complainant would pay for the Domain Name.

On that same day, January 28, 2002, the Complainant’s attorneys sent a

third email communication and advised that they were only authorized to

pay the Respondent’s out of pocket expenses, but the Respondent could make

a proposal. The Respondent answered this communication on January 29, 2002

and again inquired as to the amount the Complainant would pay the Respondent

for the Domain Name. On January 29, 2002, the Complainant’s attorneys

sent an email in which they advised that the Complainant authorized payment

of $100 for the Domain Name

The Respondent replied to this email on January 29, 2002 and

informed the Complainant that the Respondent is a "domain name collector."

Moreover, it is said that the Respondent did not believe that the $100 offer

was sincere. The Complainant responded to this email on January 30, 2002

and inquired as to what a "domain name collector" is. The Complainant

further advised that, if the Respondent wanted to make a counter-off, it

should do so. The Respondent apparently did not answer this email. The Complainant’s

attorneys sent reminder emails on February 6, 2002 and February 19, 2002.

The Respondent finally replied to the Complainant’s emails on February 19, 2002

and requested payment of one million U.S. dollars ($1,000,000). The Complainant

did not respond to this email.

B. Respondent

No response was received from the Respondent.

6. Discussion and Findings

Para. 4(a) of the Policy requires that the complainant must prove each

of the following:

-The Domain Name is identical or confusingly similar to the trade

mark;

-The Respondent has no right or legitimate interest in respect of

the Domain Name; and

-The Domain Name has been registered and are being used in bad faith.

Para. 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by para. 4(a)(iii)

referred to above.

Para. 4(c) of the Policy sets out three illustrative circumstances that,

if proved, constitute evidence of a right or legitimate interest as described

in para. 4(a)(ii) referred to above.

Domain Name Identical or Similar

It is clear from the evidence, and not disputed by the Respondent, that

the Complainant owns trademark and service mark applications and registrations

for the term SUNKIST either alone and/or in combination with other words

or designs, in many countries, including Hong Kong for the word mark SUNKIST

alone. It is clear that the Complainant markets its products throughout

the world under its trade name SUNKIST GROWERS or licenses the use of the

SUNKIST trademark in connection with a variety of products in many countries.

As was pointed out to the panelist, on May 8, 2001, the Complainant’s

SUNKIST mark was found to be "widely known in the United States and throughout

the world." Sunkist Growers, Inc. v. New York Project, WIPO

Case No. D2001-0433; see Sunkist Growers, Inc. v. S G and Delmonte-Asia.com,

WIPO Case No. D2001-0432. I endorse that

view.

The Domain Name is identical to the trademark and/or name SUNKIST in which

the Complainant has rights. Accordingly, the Complainant makes out its case

on this ground.

Respondent has no right or Legitimate Interest

Given the huge use and exposure of the SUNKIST mark/name and in the absence

of any explanation from the Respondent as to why it might have a right or

legitimate interest in using the word SUNKIST, it is difficult, with respect,

to imagine how it might have a right or legitimate interest to use SUNKIST

as its domain name.

The Complainant makes out its case on this ground.

Domain Name Registered and Being Used in Bad Faith

When the Domain Name was registered on 19 September 2001, the

international reputation of SUNKIST was substantial and very well established.

In light of this and the above findings, it is found that the registration

was, on the face of it, made in bad faith.

As to the alleged offer to sell the Domain Name, reference is made to the

Complainant’s assertion, which remains undisputed on the record, that on

February 19, 2002 the Respondent requested payment of one million

U.S. dollars ($1,000,000). Given the repute of the SUNKIST name and trademark,

the lack of evidence as to any right to use or deal in the Domain Name and

the tenor of the communications, bad faith registration and use is found

to exist.

Accordingly, the Complainant has successfully made out this ground.

7. Decision

Therefore, and in consideration to the Complaint’s compliance with the

formal requirements for this domain dispute proceeding, to the factual evidence

and legal contentions that were submitted, to the confirmation of the presence

of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii)

of the Policy, and on the basis of the statements and documents submitted

and in accordance with the Policy, the Rules and other applicable rules

and principles of law, as directed by paragraph 15(a) of the Rules, it is

found:

(1)that the Domain Name is confusingly similar to the Complainant’s

SUNKIST trademark and name.

(2)that the Respondent has no rights or legitimate interests in respect

of the Domain Name; and

(3)that the Domain Name has been registered and is being used in

bad faith by the Respondent.

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs

3(c) and 4(i) of the Policy, that the Domain Name be transferred to the

Complainant.

Clive L. Elliott

Sole Panelist

Dated: May 15, 2002

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