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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

McCain Foods Limited v. Telmex Management Services

Case No. D2001-1444

 

1. The Parties

The Complainant is indicated in the Complaint as McCain Foods Limited ("McCain"). McCain is a company incorporated in Canada, whose principal place of business is located in Florenceville, New Brunswick, Canada.

The Respondent is identified in the Complaint as Telmex Management Services, whose address is Pasae Estate, Road Town, Tortola, British Virgin Islands. The Administrative Contact for the Respondent listed on the "Whois" report submitted with the Complaint is Antoinne Rousseau.

 

2. The Domain Name and Registrar

The disputed domain name is <mccainfoods.com> ("the Domain Name"). The Registrar with which the Domain Name is registered is Intercosmos Media Group, Inc. <directnic.com> ("Media Group"). In an e-mail dated February 11, 2002, to the WIPO Arbitration and Mediation Center ("the Center"), Media Group confirmed that the ICANN Uniform Domain Name Dispute Policy ("the Policy") applies to the Domain Name registered by Respondent on November 10, 2001.

 

3. Procedural History

On December 10, 2001, the Complaint, which is in the format required by the Policy, including payment of the filing fee, was filed electronically with the Center. The Complainant certifies that the Respondent was duly served with the Complaint. On December 13, 2001, a hardcopy of the Complaint was received by the Center. On December 20, 2001, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.

On December 20, 2001, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier. On January 10, 2002, having received no response to the Complaint from Respondent within the specified time in the Notification of Complaint, the Center notified the Respondent that it was in default.

On January 12, 2002, Helen Bradbury of Telmex Management Services, Inc. sent an email to the Center sating that "we have no record of your original communique/correspondence, please send by email to us, so we may respond as we wish to defend all action in this case on behalf of our client."

On January 12, 2002, the Center acknowledged Respondent's email explaining that, on December 20, 2001, the Center had notified Respondent by email of the Complaint and commencement of the administrative proceeding, and the Response due date of January 9, 2002. The Center further explained in its January 12 email to Ms. Bradbury that it had attempted to send Respondent the Complaint and notification by courier, but it was returned to the Center. Accordingly, as no Response was sent by the January 9, 2002 due date, the Center notified Respondent's default to Ms. Bradbury via email on January 10, 2002.

On January 14, 2002, Helen Bradbury of Telmex Management Services, Inc. sent an email to the Center stating:

"May I take this opportunity to formally confirm that we reserve all rights with regard to the use of the domain "mccainfoods.com.

"We are developers of websites, from inception to final completion and have registered this domain on behalf of our Luxembourg client:-

McCain Food Supplies sarl

"We understand they are bulk food suppliers throughout the Benelux region. At no time has our client, or does our client intend to pass of [sic] as the Complainant."

On January 16, 2002, the Center acknowledged Respondent's January 14 email.

On February 11, 2002, Helen Bradbury of Telmex Management Services, Inc. sent a one-line email to the Center posing the question "A response was filed in this case?" On February 13, 2002, the Center responded to this email, advising that the Center had received no response to the Complaint by the due date of January 9, 2002, and that, therefore, Respondent’s default had been notified to Respondent by email. The Center received no further communication from Respondent.

On February 11, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date of February 25, 2002. This Notification informed the parties that the Administrative Panel would be comprised of a sole Panelist, Lynda J. Zadra-Symes of Newport Beach, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.

 

4. Factual Background

A. The Complainant

The Complainant, McCain Foods Limited ("McCain") is a corporation incorporated on May 24, 1956, and existing under the laws of the Providence of New Brunswick, in the country of Canada. McCain has been in operation in Canada for over forty years and is one of the largest producers of potato products in the world.

Over the years since 1956, McCain has become a multinational corporation. The Complainant has a long history and has acquired and built significant goodwill and reputation using the trade name McCain Foods. McCain is also the owner of "world famous" trademarks in numerous countries around the world including the mark "McCain" for use in association with frozen food products. In Canada the trademark registrations of McCain include: McCain & Design, Reg. No. TMA417,828; McCain & Design, Reg. No. TMA433,609, McCain & Design, Reg. No. TMA450,907; McCain & Design, Reg. No. TMA502,146, to name a few. There are no fewer than 42 trademark registrations in Canada owned by the Complainant that include the mark "McCain" (hereinafter the "McCain Marks"). Complainant also holds trademark registrations for marks including the word "McCain" in many other countries.

The Complainant itself and through its subsidiaries, is a manufacturer of french fries, prepared food products, desserts, vegetables, juice, pizza, meat products, potato products, and frozen snack products. It is well known in the Canadian and in the world food industry. It is one of the largest companies producing processed and manufactured potato products and one of the largest producers of french-fried potatoes in the world. Internationally, the Complainant and its subsidiaries have more than fifty-eight food production facilities in operation in thirteen countries on four continents. The Complainant has been named "Processor of the Century" by Food in Canada, a respected magazine in the food industry in Canada.

McCain currently operates a number of web sites in several languages under, the domain names: <mccain.com>, <mccain.ca>, <mccain.co.uk>, <mccain.de>, <mccainusa.com>, <mccain-nordic.com> and <mccain.nl>. These web sites provide information on McCain as a company, its brands, including recipes and nutritional information for frozen prepared food products, financial information and press releases. Complainant extensively promotes its business through all media, including print media, television and the Internet. Complainant spends millions of dollars each year on such promotion worldwide.

B. The Respondent

The Respondent appears to be a company located in the British Virgin Islands. The Respondent’s corporate and trade name, Telmex Management Services, does not appear to have any connection with the Domain Name. The web site located at the domain name <mccainfoods.com> was linked to a web site for <girlhire.com>, which contains illicit or sexually suggestive photos and is a web site for the hiring of women as "ceo model executive lover friend associate fantasy maid secretary date escort host companion guest dinnerdate wife consultant temp gift & exhibition staff". Complainant submitted in Annex K to the Complaint web pages downloaded on November 22, 2001, from the website located at <mccainfoods.com>.

Upon discovering Respondent’s registration and use of <mccainfoods.com> Complainant sent Respondent a letter asking him to cease and desist his unlawful use of Complainant’s marks.

Complainant sent that letter by Registered Mail and by e-mail to the address provided by the BetterWhois.com domain name registration lookup, Antoine Rousseau failed to respond to either the letter or the e-mail.

 

5. The Parties' Contentions

A. Complainant

The Complainant claims that it is the owner of all goodwill in and associated with the mark McCAIN in connection with food products, and that its mark has acquired international fame by virtue of its worldwide use and extensive worldwide promotion since 1956. Accordingly, any persons seeking to contact Complainant would logically seek Complainant at the Domain Name <mccainfoods.com>. According to the Complaint, customers of Complainant specifically contacted the Complainant to report the existence of Respondent’s web site and complain as a result of attempts to locate the Complainant’s web site using appropriate domain names.

B. Respondent

On January 14, 2002, Helen Bradbury of Telmex Management Services, Inc. sent an email to the Center stating:

"May I take this opportunity to formally confirm that we reserve all rights with regard to the use of the domain "mccainfoods.com."

"We are developers of websites, from inception to final completion and have registered this domain on behalf of our Luxembourg client:-

McCain Food Supplies sarl

"We understand they are bulk food suppliers throughout the Benelux region. At no time has our client, or does our client intend to pass of [sic] as the Complainant."

On January 16, 2002, the Center acknowledged Respondent's January 14 email.

On February 11, 2002, Helen Bradbury of Telmex Management Services, Inc. sent a one-line email to the Center posing the question "A response was filed in this case?" On February 13, 2002, the Center responded to this email, advising that the Center had received no response to the Complaint by the due date of January 9, 2002, and that, therefore, Respondent’s default had been notified to Respondent by email. The Center received no further communication from Respondent.

Thus, the Respondent defaulted and did not place any evidence or submissions before the Panel in answer to the Complaint other than its email of January 14, 2002, stating that it had registered the Domain Name on behalf of its Luxembourg client, McCain Food Supplies sarl, which Respondent claimed was a bulk food supplier throughout the Benelux region. However, as discussed below, Complainant submitted evidence that the Domain Name was linked directly to a website at the domain name <girlhire.com> dealing with the hire of women and offering provocative photos of and services of women and men for escort and/or personal services. Respondent did not address the Center to any evidence which would rebut Complainant's submissions. Thus, the statements in the Complaint are undisputed.

 

6. Discussions and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) 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 Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainant's undisputed representations.

The Respondent did not submit any response and made no attempt to rebut Complainant's prima facie showing. Thus, the Complainant's representations are undisputed.

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

The Complainant submits that the Domain Name is confusingly similar to the Complainant’s McCAIN Marks, the corporate and trade names used by the Complainant and the domain names and websites located at <mccain.com>, <mccain.ca>, <mccain.co.uk>, <mccain.de>, <mccainusa.com>, <mccainnordic.com> and <mccain.nl>.

The Complainant’s McCAIN Marks and the disputed Domain Name are identical in their use of the mark McCAIN. That trademark is extensively used and registered by the Complainant and its subsidiaries around the world for food products. The only difference between Complainant’s McCAIN Marks and the disputed Domain Name is that Respondent has added the word "FOODS." This combination is used by the Complainant in its corporate and trade names. Therefore, Respondent’s use of the combined words McCAIN and FOODS only serves to increase the confusing similarity of the Domain Name with Complainant’s McCAIN Marks.

(ii) Respondent has no rights or legitimate interest in the Domain Name

Respondent’s Domain Name was registered very recently, on November 10, 2001. Respondent is not a licensee of Complainant and is not authorized to use Complainant’s McCAIN Marks. There is no evidence that the term "McCain Foods" is the subject of any trademark registration in which Respondent has rights. Nor is there any evidence that the disputed Domain Name is a legitimate name of any business belonging to or identified with Respondent. Neither Respondent’s registrant name nor the content of the website located at the disputed Domain Name indicate any legitimate business connection with the name "McCain Foods".

(iii) the Domain Name was registered and is being used in bad faith

The Respondent is not using the domain name to sell food or any wares or services related to foods. Rather, as shown in the printed webpages submitted with the Complaint, the Respondent’s website was linked directly to a site at the domain name <girlhire.com> dealing with the hire of women and offering provocative photos of and services of women and men for escort and/or personal services.

Respondent did not respond to Complainant’s counsel’s letter dated November 26, 2001, informing Respondent that the Domain Name violated Complainant’s trademark rights in the McCAIN Mark. There is no evidence of a legitimate non-commercial use of the Domain Name by Respondent.

Moreover, on March 5, 2002, the Panel attempted to locate a website at the Domain Name <mccainfoods.com> and discovered that the Domain Name linked to <buyourdot.com> which expressly advertised the Domain Name for sale with the statement "send us an email and make us a bid on this domain name."

Whilst there is no evidence that the Respondent has yet sought to sell the rights to the disputed Domain Name to Complainant, it is clear that the Respondent has no legitimate interest in the Domain Name and is "squatting" on the Domain Name to the prejudice of the Complainant.

 

7. Decision

For the reasons set forth above, the Panel finds that:

(a) the Domain Name registered by Respondent is identical or confusingly similar to trade marks in which Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the Domain Name, and

(c) the Respondent’s Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <mccainfoods.com> be transferred to Complainant.

 

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Lynda Zadra-Symes
Sole Panelist

Dated: February 25, 2002