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WIPO Arbitration and Mediation Center

The Complainant is Welch Foods Inc., a Michigan corporation having its principal place of business at Three Concord Farms, 575 Virginia Road, Concord MA 01742, U.S.A. (hereinafter "Welch Foods" or "Complainant").

The Respondent is USCYB, with its address at 99 Park Avenue, Suite 424, New York, NY 10016, U.S.A. (hereinafter "USCYB" or "Respondent").

The domain name at issue in this proceeding is <welchfoods.com>.

The Registrar is BulkRegister.com.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "ICANN Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.

The Complainant submitted its Complaint in this proceeding, dated August 22, 2001, to the WIPO Arbitration and Mediation Center ("the Center") by hard copy, which was received on August 28, 2001. On August 31, 2001, by way of Complaint Deficiency Notification, the Center requested that the Complainant submit its Complaint in electronic format (Paragraph 3(b) of the ICANN Rules). The Complainant complied with the Complaint Deficiency Notification and the Complaint was received by the Center by e-mail on the same day.

On September 10, 2001, the Center notified the Respondent of the Complaint, informing the Respondent, inter alia, that the deadline for submitting its Response was September 30, 2001. The Respondent did not file a Response by that date, and on October 4, 2001, the Center issued a Default Notice. No Response has been received since that time.

The Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the ICANN Rules. Furthermore, the Registrar has confirmed that <welchfoods.com> was registered through BulkRegister.com, Inc. and that the current registrant of the domain name registration is USCYB. The Registrar has additionally confirmed that the Policy is applicable to the domain name and that the registration has a "LOCK" status.

The Center appointed D. Brian King as Sole Panelist by Notification of October 24, 2001, and the undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received after the appointment of the Sole Panelist.

The facts relevant to the current matter are set out in the Complaint. Considering the evidence attached to the Complaint, and the fact that the Respondent has not filed a Response contesting the Complainant’s contentions, the Panel finds the following facts to have been established.

The Complainant is a global producer of juice, jam and jelly products and has been in business since the last century. It is the owner of more than 25 United States trademarks and a number of trademarks outside the United States that include the name "Welch’s" (see Complainant’s exhibits C and D). However, the name "Welch Foods," while being the name of the Complainant corporation, has not been registered as a trademark in the United States or, as appears from the evidence presented by the Complainant, in any other country.

The Complainant owns the domain name <welchs.com>, which has been in operation since February 1996. This website gives information about the company’s food products (see Complainant’s exhibit G).

The domain name at issue in this case, <welchfoods.com>, does not currently resolve to an active website. Indeed, it appears that the Respondent has made no use at all of the domain name since registering it on October 17, 2000. According to the Whois database of the Registrar (Complainant’s exhibit A), the subject domain name would have expired on October 17, 2001, absent renewal by the Respondent. However, due to the pendency of this administrative proceeding, the domain name has been and remains "locked" notwithstanding the passage of that date.

On April 26, 2001, the Complainant wrote a "cease and desist" letter to the Respondent, followed by a second such letter on May 23, 2001 (Complainant’s exhibits H and I). The Respondent did not answer either letter.

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

The Complainant states that the domain name is identical or confusingly similar to the Complainant’s registered trademarks and to its corporate mark, "Welch Foods".

The Complainant further argues that the Respondent has no legitimate interest with respect to the domain name, stating that: (a) no legitimate use of the domain name has been made since registration, some 13 months ago; (b) prior to the notice of this dispute, the Respondent did not use the domain name or a trademark relating to the domain name, in connection with a bona fide offering of goods and services; (c) the domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent; and (d) the dormant state of the website goes to show that the Respondent has not made a bona fide non-commercial or fair use of the domain name. The Complainant further alleges that if the Respondent were to use the domain name to create a website, the Respondent would necessarily misdirect Internet users who would expect that they would be accessing Welch Foods’ site.

Finally, the Complainant submits that the Respondent has registered and is using the domain name in bad faith. Significantly, the Complainant does not allege that any of the four circumstances set out in Paragraph 4(b) of the Policy, as constituting evidence of bad faith, are present in this case. Rather, the Complainant argues that the "Respondent’s bad faith registration of the <welchfoods.com> is evidenced by its choice of a domain name having nothing to do with Respondent’s business and which is identical to Complainant’s famous trade name and confusingly similar to Complainant’s famous trademarks" (Complaint, paragraph 46). With respect to the separate requirement of proving use of the domain name in bad faith, the Complainant suggests that this is shown by the totality of the circumstances in this case.

The Respondent, as noted earlier, has not submitted a Response to the Complainant’s Complaint, despite being properly notified of the Complaint.

Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name 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 in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Notwithstanding the Respondent’s default, the Complainant retains the ultimate burden of proof on each of these elements. They will be examined in turn below.

The domain name at issue substantially incorporates the Complainant’s trademark "Welch’s". This has been held to be sufficient to establish that the name is "confusingly similar" to the Complainant’s registered trademarks. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (WIPO January 23,  2001); Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO September 18, 2000). Considering also that the Complainant is a food company, and that the domain name is identical to its corporate name, the Panel finds that the Complainant has established the first element of its case.

The Panel is similarly satisfied, on the evidence presented, that the Respondent lacks rights or legitimate interests in respect of the domain name. In particular, it appears that none of the circumstances identified in Paragraph 4(c) of the Policy, as evidencing such rights or legitimate interests, is present here. There is no evidence that the Respondent has made "demonstrable preparations" to use the domain name in connection with a bona fide offer of goods or services; that its business has "been commonly known" by the domain name; or that it is making any "legitimate non-commerical or fair use" of the domain name. On the contrary, the domain name is not presently being used for any purpose whatsoever, and there is no indication in the record as to what the precise nature of the Respondent’s business (or other noncommercial activity) is. Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the 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, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location, or of a product or service on the website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith" by the respondent. This requirement is conjunctive, and therefore the complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000), at paragraphs 7.4 to 7.6.

The Panel concludes that as to the first part of the test – i.e., registration in bad faith – the requisite showing has been made by the Complainant. There is no evidence that the Respondent is engaged in the food business, has any association with the Complainant or otherwise has a legitimate business interest in the domain name. Furthermore, given the long history of the Complainant corporation, its scope of consumer food products and the fact that it has registered the trademark "Welch’s" on numerous occasions and in various jurisdictions, it appears likely that the Respondent should have known, at the time it registered the domain name, that the Complainant did or might have protected rights in the name "Welch Foods". Under Paragraph 2 of the Policy, it was incumbent upon the Respondent to investigate this possibility prior to making the registration. There is no indication that it did so.

The inquiry does not end there, however, because the Complainant must also satisfy the second part of the test – use of the domain name in bad faith. The Complainant has put forward very little in the way of evidence or argument on the issue of bad faith use. The issue is, moreover, a difficult one, since the record indicates that the Respondent has made no use at all of the domain name since its registration.

The Decisions of prior Administrative Panels have established that a respondent’s inactivity, in terms of any use of the domain name in question, can constitute use in bad faith in some circumstances. 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, Case No. D2000-0003, at paragraph 7.9. See also Wal-Mart Stores, Inc. v. G. W. and Mm Mmmm, Case No. D2001-0277 (WIPO June 29, 2001); Sources Minérales Henniez SA v. Ortensio Vaccaro, Case No. D2001-0638 (WIPO July 4, 2001).

The teaching of these and other cases is that mere non-use of a domain name, standing alone, will not suffice to establish bad faith under Paragraph 4(a)(iii) of the Policy. However, where other circumstances indicative of bad faith are present, the act of holding a registered domain name may rise to the level of "use[] in bad faith" within the meaning of that Paragraph.

In the present case, the Panel finds that such circumstances are present. These include, in particular:

- that the Complainant’s corporate name (Welch Foods) and registered trademarks (primarily "Welch’s") are sufficiently well-known, at least in the United States, that the Respondent should have known that the Complainant had, or might have had, protected rights in the subject domain name;

- that the Respondent apparently made no effort to investigate this question prior to registration, as required by Paragraph 2 of the Policy;

- that the Respondent has made no legitimate use of the domain name since registering it approximately 13 months ago, nor is there evidence of any preparations for a legitimate commercial or non-commercial use;

- that in light of the identity between the domain name and the Complainant’s corporate name, and the close similarity to its trademarks, it is difficult to conceive of any circumstance in which commercial use of the domain name would not run afoul of Paragraph 4(b)(iv) of the Policy; and by the Respondent.

- that the Respondent has failed to introduce any defense or justification on the issue of good faith registration and use, notwithstanding at least three opportunities to do so, these being the receipt of two "cease and desist" letters and the proper service of the Complaint in this case.

The Panel recognizes that the first two circumstances identified above relate primarily to the issue of bad faith registration. However, they may also be considered, in the Panel’s view, as part of the totality of the circumstances on the separate question of bad faith use.

It is of course possible in this case, as doubtless in many cases involving defaulting respondents, to imagine some possible uses of the subject domain name – for example, non-commercial uses – that might conceivably be legitimate. The Panel considers, however, that it is neither necessary nor desirable for it to engage in such speculation. As noted above, the Respondent had several opportunities to explain its interest in the domain name and its plans, if any, to make legitimate use of the domain name in the future. It has failed to do so, and this failure justifies the inference that any response it could have made would not have been helpful to it on the bad faith issue.

In sum, based on the totality of the circumstances present in this case, the Panel concludes that the required elements of bad faith registration and bad faith use have, on balance, been sufficiently established.

For the foregoing reasons, the Panel determines that the Complaint succeeds and directs that the domain name <welchfoods.com> be transferred to the Complainant.

D. Brian King
Sole Panelist

Dated: November 8, 2001