A WIPO Arbitration and Mediation Center

DMINISTRATIVE PANEL DECISION

CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited

Case No. D2020-0991

1. The Parties

The Complainant is CSC Brands LP, United States of America (“United States”), represented by SILKA Law AB, Sweden.

The Respondent is Domain Admin, Privacy Protect, LLC, United States / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <campbellsoupokta.com> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2020. On April 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 27, 2020.

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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020.

The Center appointed Gareth Dickson as the sole panelist in this matter on May 29, 2020. 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 manufactures and markets foods, including soups, and has annual sales of approximately USD 8.1 billion. It is the owner of a number of trade mark registrations around the world for CAMPBELL’S (the “Mark”), both as a word mark and as a figurative mark, including:

- United States trade mark registration number 0048664 for “condensed soups” under class 29, registered on January 9, 1906;

- United States trade mark registration number 0299495 for “canned tomato juice” under class 32, registered on December 6, 1932;

- United States trade mark registration number 1839540 for “sauces” under class 30, registered on June 14, 1994; and

- United States trade mark registration number 2052959 for “soup” under class 29, registered on April 15, 1997.

The Complainant is also the owner of a large number of domain names incorporating the Mark, including <campbellsoup.com>, registered on July 10, 1996, and <campbellsoupcompany.com> registered on July 26, 2002, and it is the proprietor of a YouTube channel for “Campbell’s Soup” at “www.youtube.com/campbellsoup”.

The disputed domain name was registered on March 26, 2020. It currently directs Internet users to a webpage featuring pay-per-click advertisements for HR and employee services.

5. Parties’ Contentions

A. Complainant

The Complainant notes that the disputed domain name incorporates the Mark together with the associated term “soup”, for which it is well known, and the term “okta”, which relates to an HR portal provided to the Complainant by Okta and accessed at the similar address “www.campbellsoup.okta.com”. The website accessed via the disputed domain name provides pay-per-click advertisements relating to HR and employee services, which in turn provide the Respondent with commercial gain. The Complainant submits that such use cannot be considered a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the mere addition of the generic term “soup” does not dispel the confusing similarity arising from the incorporation of Mark in the disputed domain name. Instead, it argues that it increases the likelihood of confusion by including a term that relates to the soup business of the Complainant, which is commercialised under the Mark. This similarity will tend to induce consumers into visiting the website accessed via the disputed domain name, under the misapprehension that they will be visiting a website endorsed by the Complainant.

The Complainant asserts that the Respondent is not commonly known by the Mark, and that it is not making a fair use of the disputed domain name.

Finally, the Complainant argues that the Respondent has used the disputed domain name in bad faith as the Respondent has knowingly incorporated the Mark and used it to divert Internet users to the Respondent’s website. The Complainant argues that in light of the prominent and active business presence of the Complainant prior to the registration of the disputed domain name, including online, the Respondent must have been aware of the Mark and that no permission had been given for its incorporation into the disputed domain name.

From the available evidence, including the combination of the Mark with the carefully selected term “soup”, the Complaint infers that the Respondent was fully cognizant of the Mark at the time of registration and subsequent use of the disputed domain name and acquired the disputed domain name with knowledge of and intent to use the Mark for commercial gain, all while hiding behind a privacy service.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:

a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

c) the disputed domain name has been registered and is being used in bad faith.

These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The combination of “campbell” and “oup” in the disputed domain name will be read as “campbell’s soup”, as is the case of the Complainant’s own domain names and YouTube channel referenced above (namely, <campbellsoup.com>, <campbellsoupcompany.com> and “www.youtube.com/campbellsoup” respectively). The addition of “okra” in the disputed domain name does not prevent a finding of confusing similarity. The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter this conclusion.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel makes a coincidental adoption by the Respondent of a domain name incorporating the Mark and the term “soup” highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.

There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.

Furthermore, the redirection of Internet users to a website offering pay-per-click links which capitalise on the reputation and goodwill of the Mark and which relate closely to aspects of the Complainant’s business does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”

By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.

As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered over a century after the Mark was first registered, and accepts that the disputed domain name was chosen by reference to the Mark. Indeed, the inclusion of “soup” in the disputed domain name is likely to reinforce the likelihood of confusion between the disputed domain name and the Mark.

As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.

The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.

The disputed domain name is also being used in bad faith.

It is being used for a commercial purpose that involves capitalising on the Complainant’s goodwill in the Mark and misleading those Internet users seeking information about the Complainant.

Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to provide access to sponsored advertising for services that capitalise on the Complainant’s goodwill in the Mark is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad f-aith.

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <campbellsoupokta.com> be transferred to the Complainant.

Gareth Dickson
Sole Panelist
Date: June 12, 2020