McIlhenny Company v. Express Personnel Advertising
Case No. D2006-0659
1. The Parties
The Complainant is McIlhenny Company, Avery Island, Louisiana United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Express Personnel Advertising, West Bay (KY), United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <tabassco.com> is registered with NameScout
Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2006. On May 29, 2006, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On May 30, 2006, NameScout Corp. 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 June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 3, 2006. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on July 5, 2006.
The Center appointed Edward C. Chiasson Q.C. as the
sole panelist in this matter on July 12, 2006. The Panelist submitted a Statement
of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds
that it was constituted properly.
4. Factual Background
The following information derives from the Complaint and the material delivered with it.
The Complainant is the owner of the TABASCO trademark for pepper sauces and a variety of other food and merchandise.
The Complainant first used the TABASCO mark on pepper sauce in the United States in 1868. Sales in Europe began in the late 1870s. Use has grown worldwide and encompasses a broad range of sauces, foods, clothing and sportswear and other goods and services.
The Complainant obtained trademark registration for the TABASCO mark in respect of pepper sauce in the United States in 1927. It currently owns numerous trademark registrations for the TABASCO trademark for pepper sauce and a wide variety of other goods and services throughout the world.
The overwhelming majority of the Complainant’s trademark registrations antedate the Respondent’s registration of the subject domain name.
The Complainant owns the domain name <tabasco.com>, which was registered on March 1, 1995. The Complainant operates a website associated with its domain name <tabasco.com> providing information and services related to TABASCO branded products.
The overwhelming majority of the Complainant’s sales of its TABASCO branded sauces and food products are via the restaurant and retail supermarket trade, but the Complainant has a growing trade for its various TABASCO branded goods through its mail-order catalogue and Internet site. Sales through these channels were in excess of $9,000,000 from 1993 through 2003.
The Complainant spent a considerable amount for advertising and promotion of its TABASCO mark worldwide from 1993 through 2003.
The Respondent registered the subject domain name on September 23, 2005.
Prior to becoming registered in the Respondent’s name, the subject domain name was registered in the name of 260.com Holdings LTD.
The Complainant sent a warning letter to 260.com Holdings Ltd on November 23, 2005, by email and courier. The email was delivered successfully, but no response from 260.com Holdings Ltd was received.
A subsequent WHOIS search revealed that the Respondent had superseded 260.com Holdings Ltd as the registrant of the subject domain name. Although there has been a change of registrant, the website to which the subject domain name resolves has not changed substantially since the transfer from 260.com Holdings Ltd to the Respondent. The administrative contact, technical contact, and DNS information remain unchanged.
The Respondent has not been licensed, authorized, contracted or otherwise permitted by the Complainant to use the TABASCO trademark or to apply for any domain name incorporating the TABASCO trademark or any mark confusingly similar to it. The Complainant has not acquiesced in such use or application by the Respondent. At no time did the Respondent have authorization from Complainant to register the subject domain name.
Prior to the registration of the subject domain name the Respondent did not use TABASSCO or any mark containing TABASSCO as a trademark, company, business or trade name. The Respondent is not commonly known in reference to TABASSCO or any combination of this mark.
The subject domain name is associated currently with a webpage purporting to provide information on an array of goods and services including TABASCO branded products. The links on the website are pay-per-click advertising links.
The Respondent has engaged in a pattern of registering domain names incorporating
famous trademarks as domain names. A reverse whois search reveals that Respondent
owns numerous domain names which incorporate famous trademarks of third parties
or slight variations on famous trademarks, for example: <kellogsfuntown.com>;
<nikeskateshoes.com>, <cartoonetwert.com>; <birkenstok.com>.
5. Parties’ Contentions
A. Complainant
The Complainant relies on its registration and use of the “TABASCO”. It asserts that the subject domain name is identical or confusingly similar to its mark. The Complainant contends that: “Registration of such domain names are known as ‘typo-piracy’ or ‘typo-squatting’” .
The Complainant relies on the fact that the Respondent is not known by the subject domain name and is not authorized to use the Complainant’s mark as supporting the contention that the Respondent does not have a legitimate interest in the subject domain name. The Complainant also notes that the Respondent uses the Internet site to which the subject domain name resolves to obtain revenue based on the Complainant’s name and products.
This latter fact is said also to support the Complainant’s allegation of bad faith and the Complainant relies on the fact that the Respondent has a history of registering domain names containing well-known marks.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant relies on its registration and use of “TABASCO” and asserts that the subject domain name is identical or confusingly similar to it.
Whether a domain name is identical to a mark or is confusingly similar to a mark involves different criteria.
It is clear that the Complainant has rights to “TABASCO” through registration and use.
TABASCO is a distinctive trademark.
In this case, the subject domain name is not identical to the Complainant’s mark, but the difference – an additional “s” – makes it confusingly similar to the Complainant’s mark.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
A respondent is not obliged to participate in a domain name dispute proceedings, but if it were not to do so, it would be subject to the inferences that flow naturally from the not unreasonable assertions of fact of a complainant.
The subject domain name is associated currently with a webpage purporting to provide information on an array of goods and services including TABASCO branded products. The links on the website are pay-per-click advertising links.
The Respondent is not known by the subject domain name and is not authorized by the Complainant to use the Complainant’s mark. Its use of the subject domain name, in all probability, to obtain revenue by trading on the Complainant’s mark and goods, is not proper, not is it indicative of it having rights or legitimate interests in the disputed domain name for the purpose of the Policy.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to a complainant’s mark does not lead automatically to a conclusion of bad faith, but the facts that support the finding may be relevant to the inquiry.
The fact that a respondent has a history of registering domain names that incorporate well-known marks is not conclusive that it has acted in bad faith, but the information is relevant and unrebutted has weight.
The Respondent has engaged in a pattern of registering domain names incorporating famous trademarks as domain names. A reverse whois search reveals that Respondent owns numerous domain names which incorporate famous trademarks of third parties or slight variations on famous trademarks, for example: <kellogsfuntown.com>; <nikeskateshoes.com>, <cartoonetwert.com>; <birkenstok.com>.
The long use by the Complainant of its mark leaves little doubt that the Respondent was aware of it when the subject domain name was registered. Indeed, it capitalized on the Complainant’s mark and merchandise through its use of the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii) of the Policy.
7. Decision
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name <tabassco.com> be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson Q.C.
Sole Panelist
Date: July 20, 2006
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