WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gerber Products Company v. LaPorte Holdings

Case No. D2005-1277

1. The Parties

Complainant is Gerber Products Company, Fremont, Michigan, United States of America, represented by Debevoise & Plimpton LLP, United States of America.

Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <gerberfood.com>, <gerberinsurance.com>, and <gerberproducts.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2005. On December 9, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On December 9, 2005, NameKing.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 14, 2005. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 9, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2006.

The Center appointed Steven Fox as the Sole Panelist in this matter on January 25, 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

Complainant is a large, multinational company with multiple subsidiaries and affiliates. The company owns and has used GERBER as a trademark in interstate commerce for more than 75 years. Complainant also owns a number of United States registrations for the GERBER mark, including, but not limited to, Registration Numbers 574,727 for cereal; 1,070,145 for baby care products; 963,676 for baby clothes; and 655,920 for baby foods.

Complainant has spent millions of dollars annually on various types of advertising involving the GERBER trademarks in magazines and newspapers, on television and the Internet, and in various other media. In 2004, Complainant’s worldwide sales revenues exceeded 1.44 billion United States dollars.

Respondent registered and owns the following Internet domain names:

- <gerberinsurance.com> - registered on September 25, 2002;

- <gerberfood.com> - registered on December 11, 2003; and

- <gerberproducts.com> - registered on December 11, 2003.

At one point, the websites located at the domain names registered by Respondent contained links to Complainant’s competitors. The websites have since been disabled.

5. Parties’ Contentions

A. Complainant

Complainant argues that Respondent registered the domain names without authorization from Complainant; that Respondent registered the domain names long after Complainant had established rights in the GERBER trademarks; that Complainant is so well-known that Respondent must have been aware of Complainant’s rights in GERBER at the time Respondent registered the domain names; and that the fact that Respondent’s domain names include the words “products,” “food,” and “insurance,” indicates that Respondent knew of Complainant’s name and the goods and services it provides. Complainant also argues that Respondent is a front for a notorious cybersquatter, Henry Chan.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has proven that it is the owner of the GERBER trademark and marks incorporating the same with regard to a wide variety of goods. This trademark is included in the disputed domain names. The fact that the words “products,” “food,” and “insurance” are added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain names. All that was added are generic terms of products Complainant manufactures and sells. Complainant is correct that the addition of generic or descriptive words is not sufficient to distinguish a mark from its subsequent adopter. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“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”).

The Panel therefore finds that the domain names are confusingly similar to Complainant’s GERBER trademark. Accordingly, the Panel concludes that Complainant has satisfied the first element under paragraph 4(a) of the Policy in the present case.

B. Rights or Legitimate Interests

Respondent did not reply; thus, the record has no evidence to support a finding that Respondent has rights or legitimate interests in the domain names. Complainant has not licensed its mark to Respondent. Indeed, the timing of Respondent’s registration of the domain names – being so many years after Complainant’s first, and wide-spread, use of its GERBER family of marks – leaves one hard-pressed to imagine what rights or legitimate interests in the domain names Respondent could have. On the contrary, Respondent no doubt knew (when it was registering the disputed domain names) that the names included protected trademarks. The facts that (i) the domain names had resolved to ads and links for competing goods and services, (ii) the domain names are not presently being used, and (iii) there is no indication in the record as to the precise nature of Respondent’s business or other noncommercial activity, leaves the Panel with the conclusion that Respondent has no rights or legitimate interests in the domain names. Accordingly, the Panel concludes that Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Those same facts – especially that the domain names had resolved to ads and links for competing goods and services – support the finding that Respondent registered and used the domain names in bad faith. Furthermore, the fact that Respondent is now passively holding the domain names is a further indication of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (doing nothing with a domain name, “passive holding”, may amount to bad faith registration and use). As concisely expressed in the Telstra decision, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at paragraph 7.9.

Telstra identified five factors which were relevant to the question of bad faith in cases of “passive holding.” In applying these five factors to the facts of this case, the Panel notes that (i) the strength of the trademark’s reputation in the instant case is high; (ii) there is no evidence by Respondent of actual or contemplated good faith use; (iii) while there are no active steps by Respondent to conceal its identity; (iv) nor any active provision of false contact details by Respondent; (v) there is a lack of any plausible actual or contemplated active use of the domain names by Respondent that would not be illegitimate.

Respondent’s failure to provide any reply on the question of its use of the domain names is a significant factor. Also, Respondent’s domain names are not a non-commercial fair use of the GERBER mark. The websites formerly offered links to Complainant’s competitors selling related products. In Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, the panel held that the term “competitor” should not be restricted to a commercial or business competitor but should encompass a person who acts in opposition to another. Linking to competitors is an act in opposition to Complainant, and it indicates that the intent of Respondent in using the domain names was to attract visitors “for commercial gain,” contrary to the Policy, paragraph 4(b)(iv). Finally, the Panel makes note of Respondent’s notorious speculation in domain names and previous involvement as respondent in WIPO proceedings under the Policy.

In light of the above the Panel is satisfied that Respondent has registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 names, <gerberfood.com>, <gerberproducts.com>, and <gerberinsurance.com>, be transferred to Complainant.

Steven Fox
Sole Panelist

Dated: February 8, 2006