WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ConAgra Brands, Inc. v. Kevin Daste, Dana One LLC
Case No. D2007-0051
1.
The Parties
The Complainant is ConAgra Brands, Inc., Omaha, Nebraska, United States of
America, of United States of America, represented by McGrath North Mullin & Kratz,
PC LLO, United States of America.
The Respondent is Kevin Daste, Dana One, LLC, San Diego, California, United States
of America.
2.
The Domain Name and Registrar
The disputed domain name <peterpanpeanutbutter.com> is registered with Crystal
Coal, Inc., Mumbai, India.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on January 13, 2007. On January 15, 2007, the Center transmitted by email
to Crystal Coal, Inc. a request for registrar verification in connection with the domain
name at issue. On January 16, 2007, Crystal Coal, Inc. 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 January 17, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was
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February 6, 2007. On January 18, 2007, Respondent sent an email to the Center stating
“I have no problem releasing this domain name to the Complainant.” At the request of
Complainant, the proceeding was suspended on January 23, 2007, until
February 22, 2007. The proceeding was reinstated on February 22, 2007, and a new
Response date was set for March 7, 2007. The Respondent did not submit any
Response. Accordingly, the Center notified the Respondent’s default on
March 12, 2007.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on
April 4, 2007. 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 the owner of United States Trademark Registration No. 0,889,444 for
the trademark PETER PAN for use in connection with peanut butter (“the Mark”).
Complainant’s predecessor in interest began use of the Mark in interstate commerce in
connection with peanut butter on March 1, 1927. Complainant and its predecessor in
interest have expended substantial resources over many years to promote the Mark in
connection with peanut butter. The mark is known throughout the world as a source for
peanut butter.
5.
Parties’ Contentions
A.
Complainant
Complainant contends that the domain name is confusingly similar to the Mark, in
which the Complainant has rights, that the Respondent has no rights or legitimate
interests in the domain name, and that the domain name was registered and is being
used in bad faith.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions.
6.
Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements
enumerated in paragraph 4(a) of the Policy have been satisfied:
(i)
the domain name in dispute is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights;
(ii)
the Respondent has no rights or legitimate interests with respect to the domain
name; and
(iii) the domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of
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the statements and documents submitted in accordance with the Policy, these Rules and
any rules and principles of law that it deems applicable.”
A.
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s PETER PAN
trademark used in connection with peanut butter in which Complainant owns a U.S.
trademark registration claiming use since 1927. The addition of the descriptive term
“peanut butter” in the domain name does not avoid a finding of confusing similarity.
The Panel finds that the first criterion is satisfied.
B.
Rights or Legitimate Interests
Respondent has not filed any response in this proceeding.
The evidence submitted with the Complaint shows that Respondent offers no goods or
services that have anything to do with the “Peter Pan” character. Respondent’s Web
site home page reflects nothing about the “Peter Pan” character other than the
appearance of the domain name itself. Instead, Respondent’s Web site displays various
links to “Airline Tickets” and “Car Rentals” and “Peanut Butter” recipes.
There is no evidence that Respondent has used or is using the domain name in
connection with the bona fide offering of any goods or services. Respondent purchased
the domain name on or about December 14, 2006. The links on Respondent’s Web Site
direct users to Web sites of food industry competitors of Complainant, or to EBay links.
Furthermore, Respondent is not commonly known by the domain name. The domain
name does not incorporate any derivations or misspellings of Dana One, LLC, Kevin
Daste or Mr. Dupre, the registered agent for Respondent listed in the records of the
Louisiana Secretary of State. Complainant asserts that Respondent has never registered
a trademark in the United States for the Mark on food products.
Respondent has no legitimate basis for using the Mark in connection with peanut butter
or any other goods or services.
The Panel finds that this criterion is satisfied.
C.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of
the registration and use of the domain name in bad faith:
(i)
circumstances indicating that Respondent has registered or acquired the domain
name primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to the Complainant who is the owner of the trademark
or service mark or to a competitor of the Complainant, for valuable consideration
in excess of the documented out-of-pocket costs directly related to the domain
name; or
(ii)
Respondent has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, providing that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of
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disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract for
commercial gain, Internet users to Respondent’s website or other on-line location,
by creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation or endorsement of Respondent’s website or
location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In this case, while Complainant has not offered to buy and Respondent has not offered
to sell the domain name, there exists other evidence sufficient to establish bad faith.
Customers expecting to see a site about the PETER PAN branded peanut butter instead
find links to organic, flavored and artisan peanut butters sold by Complainant’s
competitors. By using the disputed domain name, Respondent is attempting to attract
for commercial gain Internet users to Respondent’s website by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation or
endorsement of Respondents’ website. Furthermore, in registering the domain name, it
is likely that the Respondent had actual knowledge of the Complainant’s known
PETER PAN mark used in connection with peanut butter. Respondent’s registration of
the domain name appears to be deliberately intended to misdirect web traffic of
individuals in order to trade off the goodwill in Complainant’s PETER PAN mark.
Thus, the Panel finds that Respondent has registered and used the domain name in bad
faith in accordance with paragraph 4(b)(iv) 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 name <peterpanpeanutbutter.com> be
transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: April 23, 2007
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