The Sutton Corporation v. Spiral Matrix

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Sutton Corporation v. Spiral Matrix

Case No. D2006-0167

1. The Parties

The Complainant is The Sutton Corporation, Ottawa, Illinois, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <seattlesuttonshealthyeating.com> is registered

with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2006. On February 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 8, 2006, Intercosmos Media Group d/b/a directNIC.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 February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.

The Center appointed Keita Sato as the sole panelist

in this matter on March 14, 2006. 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 is an Illinois based company named The Sutton Corporation. The Complainant used and continues to use the mark “SEATTLE SUTTON’S HEALTHY EATING” in connection with food preparation services, food delivery services, and prepared meals of healthy foods since at least as early as 1996. The Complainant registered trademarks in United States with a federal principal register, “SEATTLE SUTTON’S” for the international class 29, 39 and 42 (Registration Nos. 2,197,001) on Oct.20,1998, and “SEATTLE SUTTON’S HEALTY EATING” figurative mark for the international class 29 (Registration No. 2,251,682), for the international classes 39, 42 (Registration No. 2,251,683) on June 8, 1999.

The Respondent named Spiral Matrix, whose address

is in Kenya, registered the Domain Name <seattlesuttonshealthyeating.com>

(hereinafter “Domain Name at issue”) on November 4, 2005, through

Intercosmos Media Group, Inc. d/b/a/ Directnic.com.

5. Parties’ Contentions

A. Complainant

The Complainant has extensively used and continues to use the mark “SEATTLE SUTTON’S HEALTHY EATING” in connection with food preparation services, food delivery services, and prepared meals of healthy foods. It has obtained trademark registrations for the mark SEATTLE SUTTON’S HEALTHY EATING and variations thereof. These marks have frequently appeared in the press in connection with its business, and have also been featured in a variety of materials distributed by the Complainant. It also relied on the Internet as a forum to promote and disseminate information about its products and services and registered the domain name <seattlesutton.com> on April 8, 1998. Internet users see the SEATTLE SUTTON’S HEALTHY EATING mark displayed on its website. As a result of extensive use and promotion, the SEATTLE SUTTON’S HEALTHY EATING mark has become distinctive and well-known and has enjoyed such distinctiveness and notoriety since almost ten years prior to the time Respondent registered the Domain Name at issue. The Respondent is not authorized to use the SEATTLE SUTTON’S HEALTHY EATING mark. The Respondent was familiar with the well-known SEATTLE SUTTON’S HEALTHY EATING mark at the time of registration, and it intentionally registered a domain name that is confusingly similar to the Complainant’s mark in order to profit from the Domain Name at issue. The Complainant contends that the Domain Name at issue not only is confusingly similar to the SEATTLE SUTTON’S HEALTHY EATING mark but also identical to the registered mark. It also contends that the Respondent has no legitimate interest in the Domain Name at issue in view of the Complainant’s prior statutory and common law rights in the SEATTLE SUTTON’S HEALTHY EATING mark for nearly ten years before Respondent’s registration of the Domain Name at issue. Respondent’s only use of the Domain Name at issue is to divert consumers to Respondent’s website which offers to sell the Domain Name and provide links to other commercial websites which offer products and/or services which compete with those offered by the Complainant. The fact that the Respondent is using the Complainant’s mark in a domain name used to promote similar goods and services similar to those offered by the Complainant is not a bona fide offering of goods or services under paragraph 4 (c)(i) of the Policy. As such, it does not create rights or legitimate interests in the Domain Name at issue. Further, the Complainant contends that the Respondent registered the Domain Name at issue with the sole purpose of intentionally attracting Internet users to Respondent’s website by way of creating confusion. There is evidence which shows that Respondent has engaged in a pattern of bad faith registrations that prevent legitimate trademark holders from reflecting their marks in corresponding domain names. Also the Respondent registered the Domain Name at issue primarily for the purpose of selling the domain name registration to the Complainant who is the owner of the mark or to a competitor for valuable consideration in excess of his documented out-or-pocket costs directly related to the domain name. Thus, the Complainant requests the Panel order the transfer of the Domain Name at issue to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

As noted above, although the Center has taken reasonable

efforts to bring the dispute to the Respondent’s attention and to enable

the Respondent to be heard, there has been no Response. In these circumstances,

paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional

circumstances, to decide the dispute on the basis of the Complaint where the

Respondent does not submit a Response. This is not a simple “rubber stamping”

procedure, however, as paragraph 15(a) of the Rules directs the Panel to decide

a Complaint on the basis of the statements and documents submitted and in accordance

with the Policy, the Rules and principles of law that the Panel deems applicable.

See, Sierra Health Styles LLC v. Modern Limited - Cayman Web Development,

WIPO Case No. D2006-0020.

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complaint has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii) that the Domain Name has been registered and is being used in bad faith.

The Panel deals with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant has registered a trademark “SEATTLE

SUTTON’S HEALTHY EATING” in the United States. The Domain Name at

issue consists of this trademark with the simple suffix “.com”,

and combined terms with deletion of spaces and apostrophe between terms. The

addition of the suffix of the generic top-level domain (gTLD) “.com”

is without legal significance from the standpoint of comparing the Domain Name

at issue to “SEATTLE SUTTON’S HEALTHY EATING”, since all domain

names are part of a wider TLD, “.com” being one of only several

gTLDs and being of no use to identify a specific enterprise as a source of goods

or services. Similarly, the elimination of the space between terms and elimination

of the apostrophe following “SUTTON” are without legal significance

since those changes are dictated by technological factors and common practice

among domain name registrants and users. See Dunkin Donuts Incorporated and

Dunkin Donuts USA, Inc. v. Random Thinkers and Patrick Huba, WIPO

Case No. D2001-0104. It might be argued that the Complainant’s trademark

right does not cover whole part of the mark since the part “HEALTHY”

is disclaimed. A previous Panel concluded that a disputed domain name is neither

identical nor confusingly similar to a Complainant’s trade mark due to

the presence of a disclaimer in the relevant UK registration. See Thomas

Cook Holdings Limited v. Sezgin Aydin, WIPO

Case No. D2000-0676 (the domain name <hot18to30.com> incorporated

in this dispute, and 18to30 was disclaimed in the registered logo mark “Club

18-30”). However, it should be considered that this case was decided upon

different facts, since the Domain Name at issue incorporates the key term “seattlesuttons”

of the Complainant’s mark. Thus, the first requirement is met.

B. Rights or Legitimate Interests

The Respondent’s webpage operated under the Domain Name at issue provides links to other commercial sites. Among these sites, a number offer diet and weight control-related goods and services which are similar to the products and services of the Complainant’s business. This kind of use of domain name is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and as such does not create rights or legitimate interests in the Domain Name at issue. See Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co. Ltd NAF Case: FA0303000149188. Based on the record, the Panel agrees with the Complainant’s contention that the Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent’s registration and use of the Domain

Name at issue is in bad faith. There are three reasons for this finding. First,

the purpose of the Respondent’s registration of the Domain Name at issue

is to intentionally attract Internet users to the Respondent’s website

by way of confusion. Second, the Respondent’s use of the Domain Name at

issue is in bad faith, since use of the Domain Name at issue for products or

services similar to those offered by the Complainant is evidence of bad faith

intent to trade off of the goodwill that the trademark owner has established

in its mark. See G. D. Searle & Co. v. Michael Kerr, NAF Case No.

FA02060000114676. Third, the Respondent has engaged in a pattern of bad faith

registrations that prevent legitimate trademark holders from reflecting their

marks in corresponding domain names. See, for example, Societe des Hotels

Meridien v. Spiral Matrix/Kentech Inc, WIPO

Case No. D2005-1196, Deutsche Telekom AG v. Spiral Matrix, WIPO

Case No. D2005-1145, Dr. Ing. h. c. F. Porsche AG v. Kentech, Inc. a.k.a.

Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain

Purchase, NOLDC, Inc., WIPO Case No. D2005-0890,

American Century Proprietary Holdings, Inc. v. Spiral Matrix,

NAF Case No. FA0510000584708, Finaxa S.A. v. Spiral Matrix, WIPO

Case No. D2005-1044. The third and last requirement is also met.

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, <seattlesuttonshealthyeating.com> be transferred to the Complainant.

Keita Sato

Sole Panelist

Dated: March 29, 2006