ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1.The Parties and Contested Domain Name.
Ventura Foods, LLC of the City of Industry, California, United States of America. Ventura Foods, LLC is represented by Melvin Soriano of Pasadina, California.
The Registrant is Vijay Pathi of Bellary, Karnataka, India. The Registrant has not appointed a representative.
The contested domain name is: saffola.com
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 28th, 2000.
eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page; and
- Verify if the Complaint was administratively compliant.
The inquiry lead the Clerk of eResolution to the following conclusion: the Registrar is ReserveMe.com, the Whois database contains all the required contact information but the billing contact. The billing contact was obtained by contacting the Registrar. The Contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet to Mr. Pathi in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. on March 12th, 2000. That date is the commencement date of the administrative proceeding.
On March 12th, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The Respondent did not respond within the prescribed 20 days.
On April 4, 2000, the Clerk's Office contacted the Registrar to obtain a confirmation of the existence of a valid Registration Agreement between the Respondent and the Registrar. On April 4, the Registrar responded that the domain name registrant for saffola.com was bound by a valid Service Agreement (version 5.0).
An email message was received from the Respondent by the Registratar on April 13, which message is reproduced below. A further message from the Respondent was received April 20, substantially repeating the April 13 message. The Complainant responded by email on April 20.
3. Factual Background
The Complainant submits in part that:
The Saffola brand name is currently owned by Ventura Foods, LLC. 14580 E Don Julian Road, City of Industry, California. The brand name Saffola has been registered and trademarked for mayonnaise, margarine, salad oil and cooking oil. Saffola is not only a well recognized brand name in the Western United States, but also throughout the world. We have registered the name in Europe and the Far East. Saffola has a loyal customer base which has developed over the last forty years. The name Saffola has been advertised and promoted heavily over the last forty years. Approximately 40 million dollars has been spent in the last twenty years along on the development of the Saffola brand name. In terms of advertising development, media placement and agency fees, it is estimated that over 20 million dollars have been spent to build brand equity with consumers. An additional 20 million dollars has been spent to promote the brand to the retail trade. These funds are used by the retailers to promote and advertise the brand to the final consumer. It is important to note that the brand name Saffola is a brand name which had no meaning: it does not exist in everyday langauge. It was a name which was created at the time that Saffola was registered. It only has meaning because the Company has made an investment in the name. All of our packaging has "www.saffola.com" clearly printed on the package so that our retail consumers are able to contact us. We supply them with information and are able to answer their questions. Saffola has developed an important market to health conscious consumers in the marketplace as a result of the advertising and promotional support spent over the years. We believe that for another company to take advantage of the brand equity which we have built would be an economic theft to Ventura Foods. It is on this basis that we request that the domain name be returned to Ventura Foods.
The Saffola brand name was originally registered to Pacific Vegatable Oil Corporation in 1958 in the United States in 1958. The Registration number is #1435859. The name was first used in April 12, 1957 by Safflower Products Corporation.
The Saffola brand name is currently owned by Ventura Foods, LLC. 14580 E Don Julian Road, City of Industry, California.
The brand name Saffola has been registered as a trademark for use in connection with mayonnaise, margarine, salad oil and cooking oil.
Saffola is not only a well recognized brand name in the Western United States, but also throughout the world.
We have registered the name in Europe and the Far East.
The Complainant submitted scanned images of several documents without further explanation. Their descriptions follow:
A document marked United States Patent and Trade Marks Office entitled Trademark Principal Register shows a design comprising the word "Saffola" in a script form with a heart design appearing above the letters "ff". The Registration number is 1,477,916. It says it was registered February 23, 1988 to Wilsey Foods Inc. It states that Wilsey Foods Inc. is also the owner of registrations 664,151, 1,435,859, and others which are not specified.
A document issued by the Commissioner of Patents of the United States Patent Office showing registration of SAFFOLA as a trade mark for safflower oil for culinary purposes made in the name of Safflower Products Corporation on July 8, 1958. It bears the number 664,151
A document entitled New Certificate of Registration issued by the Commissioner of Patents of the United States Patent Office issuing a New Certificate to Pacific Vegetable Oil Corporation on December 25, 1962. It also bears the number 664,151. The purpose of a New Certificate is not apparent from the document.
A document entitled Certificate of Renewal issued by the Commissioner of Patents of the United States Patent Office on April 4, 1978 to PVO International Inc. It purports to renew the registration identified as number 664151 for twenty years from July 8, 1978.
No document showing that registration 664,151 was renewed after its expiration in July 1978 was filed.
Registration 1,435,859 was not filed.
No explanation is given for the relationship of the various companies named in these documents to the trade mark, although one might assume they are successors in title to each other. Some explanation for the fact that the U.S. Saffola trade mark registration apparently last stood in the name of Wilsey Foods Inc and not in the Complainant's name may be found in the Complaint's parenthetical observation that :
The Saffola name has been registered and trademarked to Wilsey Foods (aka Ventura Foods, LLC), 14580 E. Don Julian Road, City of Industry, California, 91746. .
Registrations outside the United States are not described or provided.
The Complaint says that it has owned the domain name www.saffola.com for the past three years and that it marks its packages "www.saffola.com". It says that for three years its customers have been accustomed to reaching it at that address. There is no explanation of how the address was lost , how the respondent acquired it, or when the Complainant ceased to operate a web site at www.saffola.com.
The Respondent's April 13, 2000 email to the Registrar reads as follows:
4. Parties' Contentions
The Complainant contends that the Respondent has not used the web site to create any value or meaning. It contends that its customers are confused.
The Complainant states that a person who visits www.saffola.com merely sees the message "Hi! You have reached my future website. This domain name is reserved through ReserveMe.com" and that this confuses and misleads those consumers who for forty years associated the unique brand name Saffola with specific products.
As noted above, after the Complaint was filed eResolution's clerk ascertained that www.saffola.com resolves to an inactive Web page.
The Respondent asserts that it has been in the saff flower seed business for forty years, is unaware of the Complainant's mark, and has no intention of misusing anyone's brand name. It says it wants the domain name to retail saff flower oil on the internet.
5. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy provides that the Complainant must prove that
"4(a) (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
"(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."
The first ground is established. The extensive and protracted use of the trade mark Saffola by the Complainant and its predecessors in title establishes the Complainant's rights to it. The Respondent does not dispute the Complainant's rights. The second level of the domain name is identical to the trade mark.
The second ground of the complaint is also established. To meet its onus the most a Complainant can ordinarily do is to establish a case to be answered by the Respondent. Here, the fact that Saffola is a coined word, at least in English, supports its contention that the Respondent has no rights in the domain name. The facts that Ventura Foods has been using the domain name for three years, the Respondent has acquired it only recently and has used it as a mere placeholder suggest that the respondent has no rights in it. The Respondent does not claim to have any rights in Saffola or prior use of it as a trade mark.
The Registrar has ascertained that the Respondent is bound by a valid Service Agreement and therefore by the Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain Name Dispute Resolution Policy. The Rules require the Respondent to « (i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name « para. 5(b)(i).
The third ground is that the domain name has been registered and being used in bad faith.
With respect to the test for use in bad faith, the Uniform Domain Name Dispute Resolution Policy provides in subsection 4(b) that :
« For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
"(ii) you have 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 you have engaged in a pattern of such conduct; or
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The Complainant's submission as to bad faith is this :
For the past three years, the domain name saffola.com was registered by Ventura Foods. For the past three years, our consumers have known that the www.saffola.com site would bring them to the health and product information from Ventura Foods. To these consumers, the contested domain name could not possibly be registered in good faith to a company or individual other than Ventura Foods. Since the time the current registrant has taken saffola.com, they have not made use of it to create any value or meaning. No value or meaning has been created for consumers, business partners, retail grocers, investors, or to the trademark owners Ventura Foods. A person who visits www.saffola.com merely sees the message "Hi! You have reached my future website. This domain name is reserved through ReserveMe.com". The squatter is sitting on a site that confuses and misleads those consumers who for forty years associated the unique brand name Saffola with specific products. Saffola has developed a loyal consumer base as a result of our advertising support. We at Ventura Foods believe that it would be economically unfair for another company to take advantage of the brand equity we have built over the past 40 years.
The Respondent's address is in India. The Complainant's evidence is that the mark is known worldwide, and therefore is known in India. The Respondent does not deny this, but says that it was « …unaware of saffola being a brand name in the usa. » The Respondent does not say he was unaware of Saffola as a brand name in India.
The Complainant claims « saffola » is an invented word. The Repondent does not contradict this or state how it came to select the same word as its domain name.
The Respondent says it previously sold saff flower seeds but it now proposes to begin to sell saff flower oil using this domain name.
In the absence of a satisfactory explanation it appears that the Respondent acquired the domain name in bad faith. It intended to either profit by creating confusion with the Complainant's brand or by selling the domain name to the Complainant.
The Respondent must be shown to be using the domain name in bad faith. The Respondent has caused a web page to appear announcing a future web site to internet users who enter the domain name in their browsers. This is a use of the domain name, and further is a use which gives effect to the bad faith with which the name was registered.
However, the use referred to by the Complainant has ceased. The complaint states in the present tense that the domain name is in use :
« A person who visits www.saffola.com merely sees the message "Hi! You have reached my future website. This domain name is reserved through ReserveMe.com". »
The Registrar subsequently found that the address resolved to an inactive web page.
We find that it is sufficient for the purposes of section 4(a)(iii) of the Policy that use be taking place when the Complaint is filed. To hold otherwise would be to permit evasion of the Policy by withdrawing domain names from use temporarily during the arbitration proceedings.
We do not wish to be taken as holding that the mere presence of trade mark rights and registrations precludes any other party from the use of those trade marks in domain names. The panel rests its decision on the specific facts of this case as set out above.
The evidence, submissions of the parties, and the ICANN Policy and Regulations compel this Panel to conclude and decide that (a) the domain name « saffola.com » registered by Vijay Pathi and at issue herein is identical to a trade mark in which Ventura Foods LLC has rights, (b) Vijay Pathi has no legitimate interest in the domain name, and (c) the domain name at issue was registered and is being used in bad faith by Vijay Pathi.
Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Name at issue, "saffola.com" be transferred from Vijay Pathi to Ventura Foods LLC.
April 26, 2000
(s) David Allsebrook
(s) Paul DeCicco
At San Diego, United States of America
(s) Bruno Gregoire Sainte Marie
At Paris, France