Thanks to Domain Name Wire for this post which illustrates once again that trademark lawyers often find themselves over their head under the UDRP when they try to arbitrate domain disputes. Clearly, counsel did not have the experience to obtain the background information necessary to understand that the domain eggo.com was a poor (if not impossible) candidate for UDRP transfer. The Kellogg North America Company v. N.A. c/o Gregor NAF decision was correctly decided under the Uniform Domain Name Dispute Resolution Policy. Kellogg wasted its money on this effort to protect the Eggo trademark.
Domain Name Wire » News » Leggo My Eggo! Kellogg Loses Domain Dispute - The Domain Industry's News Source
Kellogg North America Company, which sells frozen waffles under the “Eggo” brand, has lost a domain dispute for the domain Eggo.com. In its dispute before National Arbitration Forum, Kellogg asserted that the domain name was for sale since it was registered in 2001, probably referring to an Archive.org image of the site that showed the domain for sale at DomainDeluxe. But Kellogg didn’t check its facts and the historical ownership records, as it turns out the current owner bought the domain from DomainDeluxe in 2002 for $1,400. According to Archive.org, the domain has been used for a real consulting company called eggo since at least the early part of 2003, showing there is no confusion with the Eggo waffle brand and a bona fide use of the domain. The National Arbitration Panel panelist found that: (1) the disputed domain name is identical to the EGGO mark; (2) Complainant has rights in the mark EGGO; (3) Respondent has rights or legitimate interests in the disputed domain name; and (4) the domain name was not registered and is not being used in bad faith.
The decision is interesting because eggo.com is NOT a generic domain name. However, Respondent contented that he was unaware of the eggo brand and Kellogg attorneys apparently offered no evidence of sales of eggo waffles in Spain, where Respondent was located. More importantly, Respondent was using eggo.com for a legitimate purpose, that is, as a consulting firm which just happened to share the same name as our morning waffles. This could easily have been a 'reverse domain hijacking' decision under the facts presented. The full decision is found below.
National Arbitration Forum
Kellogg North America Company v. N.A. c/o Gregor
Claim Number: FA0712001122969
Complainant is Kellogg North America Company (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce PLC, 11730 Plaza America Dr, Suite 600, Reston, VA 20190. Respondent is N.A. c/o Gregor (“Respondent”), Duquessa de Orleans 14, Barcelona, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eggo.com>, registered with IA Registry.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On January 1, 2008, IA Registry confirmed by e-mail to the National Arbitration Forum that the <eggo.com> domain name is registered with IA Registry and that the Respondent is the current registrant of the name. IA Registry has verified that Respondent is bound by the IA Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on January 23, 2008.
On January 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Kellogg North America Company, is a wholly owned subsidiary of Kellogg Company. Kellogg Company is one of the largest food companies in the world. During the fiscal year that ended December 31, 2006, Kellogg Company had sales of $10.9 billion worldwide.
Among Kellogg’s many food products is a waffle sold under the EGGO trademark. EGGO waffles have been sold by Complainant’s predecessors in interest since 1936.
The EGGO mark is the subject of a U.S. trademark registration (No. 898,862), which is owned by Complainant Kellogg North American Company. Complainant also owns a U.S. trademark registration (No. 2,310,962) for the mark L’EGGO MY EGGO, as used on waffles. In addition to the U.S. registrations, the EGGO mark is the subject of a Community Trademark Registration (CTM) (No. 52,316), which is owned by Complainant’s licensee, Kellogg Company. See Complaint, Exhibits 3 and 4.
Complainant contends that the disputed domain name <eggo.com> is identical or confusingly similar to the EGGO mark. Complainant notes that the domain name incorporates the exact mark and merely adds the generic top-level domain “.com” onto the mark.
Upon information and belief, Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant points out that the <eggo.com> domain name resolves to the <sclipo.com> web page which, according to Complainant, includes inappropriate content for children, who are one of the primary users of Kellogg’s <leggomyeggo.com> web site. Complainant expresses concern that its reputation may be harmed as a result when children and their parents seeking the Kellogg EGGO web site end up at the <sclipo.com> site.
Complainant maintains that neither it nor its licensee, Kellogg Company, has licensed or otherwise permitted Respondent to use the EGGO mark or to apply for any domain name incorporating the EGGO mark, and that Respondent is not making any legitimate noncommercial or fair use of the EGGO mark.
Complainant further explains that its searches of the databases of both the United States Patent and Trademark Office and the Community Trade Mark Office reveal that Respondent does not own any trademark applications or registrations. Upon information and belief, Complainant contends that Respondent has never been commonly known as “Eggo.” Complainant notes that there is some indication that there was an “Eggo Innovation Consultants, S.L.” but that such entity is not the owner of the <eggo.com> domain name.
From information posted on the Internet, Complainant indicates that Respondent “Gregor” spent considerable time in the U.S. and was familiar with products in the U.S. in his role advising companies “what product/strategy they should do next.” See Complaint, Exhibit 9. According to Complainant, for Respondent to claim to be commonly known as “Eggo” would be like allowing someone to start a business named “Wal-Mart Innovation Consultants” and then claim that it was commonly known as “Wal-Mart.”
Complainant also contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The facts of record suggest and support a finding that Respondent registered and is using the domain name in bad faith, Complainant argues. It contends that from the time the <eggo.com> domain name was first registered on May 3, 2001, the domain name was for sale. See Complaint, Exhibit 10, consisting of a printout indicating that on September 26, 2001, the <eggo.com> domain name was for sale. Complainant asserts that, in 2005, after Complainant contacted Respondent regarding the infringing nature of the <eggo.com> domain name, Respondent attempted to sell the domain name to Kellogg for €100,000. See Complaint, Exhibit 5. According to Complainant, one year later, in September 2006, Respondent suggested to Kellogg that it should purchase the <eggo.com> domain name for €100,000 because Respondent was getting traffic that was intended for Kellogg’s <leggomyeggo.com> web site.
Respondent’s bad faith is further evidenced by the fact that Complainant’s EGGO mark is distinctive and known by the public in the U.S. and around the world, Complainant maintains. Complainant argues that Respondent had constructive notice of Complainant’s rights in the EGGO mark as a result of its U.S. registration and “[f]urthermore, given the widespread and long-standing advertising and marketing of EGGO waffles and related products, Respondent should have had knowledge of the EGGO trademark owned by the Complainant when he registered the disputed domain name.”
According to Complainant, “[i]n registering and later using the eggo.com domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to his and others’ websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
In his Response, Respondent contends that he has rights or legitimate interests in the <eggo.com> domain name. Specifically, Respondent argues that, before any notice of the instant dispute, he was using the <eggo.com> domain name in connection with a bona fide offering of goods or services, i.e., a consulting business known as “Eggo- Innovation Consultants Sociedad Limitada,” which is located in Spain and dedicated to defining and creating new products and services. The business was founded on February 16, 2003, and is still active today, Respondent asserts. According to Respondent, the name was selected because of its closeness to Egg – a Barcelona design firm and business partner and because it contains the initials “gg,” which correspond to the initials of the company’s founder, Gregor Gimmy. See Response, Exhibits 1, 2 and 3.
Respondent notes that he acquired the <eggo.com> domain name from Domain Deluxe on December 10, 2002, for $1,400. See Response, Exhibit 4. According to Respondent, “[m]y only reason to buy and register [e]ggo.com was for the foundation of my consulting firm Eggo. At the time I registered the domain, I did not even know of the existence of the Eggo Waffles product (Even though I lived in the USA, I did not know this product, probably because I do not eat frozen food.).”
Respondent further maintains that he did not initiate any contact with Complainant for the purpose of selling the domain name. Respondent contends that he was first contacted by Complainant’s trademark attorney on December 4, 2003, when he received a “cease and desist” letter and was requested to contact Complainant’s attorney to discuss the matter. See Response, Exhibit 6. Respondent then called the attorney and conveyed his understanding that he had not registered the domain name in bad faith because he was running a legitimate consulting business called “Eggo.” According to Respondent, during such conversation, Complainant’s attorney asked whether Respondent was willing to sell the domain name. Respondent did not offer to sell the domain name but pointed out that he might consider it if his cost for changing domain names was reimbursed. On October 20, 2006, Complainant’s attorney offered to purchase the domain name for $15,000. See Response, Exhibit 7. Respondent did not respond to this offer.
The Panel finds that: (1) the disputed domain name e<eggo.com> is identical to the EGGO mark; (2) Complainant has rights in the mark EGGO; (3) Respondent has rights or legitimate interests in the disputed domain name; and (4) the domain name was not registered and is not being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name, <eggo.com>, for all intents and purposes, is identical to the EGGO mark. The addition in the disputed domain name of the top-level domain “.com” is irrelevant for purposes of the policy. See, e.g., Snow Fun, Inc. v. O’Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name termquote.com is identical to complainant’s TERMQUOTE mark).
The Panel further concludes that Complainant, through its ownership of U.S. and CTM registrations for the EGGO mark, as well as the longstanding use of such mark, has rights in such mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes [c]omplainant’s rights in the mark.”).
Rights or Legitimate Interests
The Panel finds that Respondent has rights or legitimate interests in the <eggo.com> domain name. The preponderance of the evidence supports Respondent’s contention that he has used the disputed domain name in connection with a bona fide offering of goods or services prior to the commencement of the instant UDRP proceeding.
The evidence indicates that Respondent is the sole owner of Eggo Innovation Consultants, which was incorporated in Spain on February 17, 2003, and is an on-going enterprise. The evidence further indicates that Respondent acquired the <eggo.com> domain name in December 2002.
Respondent has provided a plausible rationale for the selection of the name “Eggo” and has stated that, at the time he registered the <eggo.com> domain name, he did not know of the EGGO mark, as used on waffles and related products. Respondent’s Response includes his certification that the information contained therein is “complete and accurate.”
The evidence also reveals that Respondent’s <eggo.com> website is active and is not being used to promote the sale of goods or services that compete with, or even relate to, that offered by Complainant under the EGGO mark.
This case can be contrasted with those cases where a respondent has either put forward no explanation for registering a domain name containing another party’s trademark or has put forward such an explanation but the panel has not found the explanation to be credible. For example, in The Liverpool Football Club and Athletic Grounds Public Limited Company & Liverpool FC.TV Limited v. Andrew James Hetherington, D2002-0046 (WIPO April 4, 2002), the respondent claimed to have registered <liverpoolfc.com> for use in relation to a business called The Liverpool Fashion Club; however, no such business was ever conducted through the website.
A further example is the case Cattlecare Limited v. Wairua Holdings Pty Limited t/a Poplar Pastoral Co, D2001-1373 (WIPO Jan. 24, 2001), in which the respondent claimed to not be aware of the complainant or its trademark (which was identical to the domain name). However as the business being operated through the website was in the same country and in the same industry as the well-known complainant, this claim also lacked credibility with the Panel.
The instant Panel notes that while the evidence indicates that Complainant’s EGGO brand waffles have enjoyed much market success and is the subject of a CTM registration (and is thus subject to protection in Spain, where Respondent’s business is located), there is no evidence as to sales in Spain itself. Thus, Respondent’s contention that he did not know of the existence of EGGO brand waffles at the time he acquired the domain name is not incredible.
Registration and Use in Bad Faith
The Panel finds that the disputed domain name was not registered and is not being used in bad faith. Rather, as set forth above, the Panel finds the evidence supportive of a determination that Respondent is using the domain name in connection with a bona fide offering of goods or services and did not know of Complainant’s EGGO mark at the time the domain name was purchased.
The evidence does not indicate that the domain name was registered or acquired for the purpose of selling it to the Complainant. The evidence suggests that it was Complainant’s counsel who requested Respondent to provide an estimate of the cost of adopting a new name. Respondent estimated such costs at €100,000. Complainant later offered to purchase the domain name for $15,000.
The evidence also does not support a determination that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of such site or of the goods or services offered thereon. To reiterate, the Panel finds that Respondent did not even know of the existence of the EGGO brand at the time he purchased the <eggo.com> domain name, and, thus, may not be found to have acted “intentionally,” within the meaning of paragraph 4(b)(iv) of the Policy. Further, the goods or services offered at the <eggo.com> domain name bear no relation to the goods sold by Complainant under the EGGO mark.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Jeffrey M. Samuels, Panelist
Dated: February 14, 2008
 Complainant’s reliance on the Lanham Act’s constructive notice requirement is misplaced. Most ICANN panels have found that the concept of constructive notice is not applicable in disputes under the UDRP. See, e.g. Alberto-Culver Co. v. Pritpal Singh Channa, Case No. D2002-0757 (WIPO Oct. 7, 2002).
 The fact that the eggo.com domain name was listed for sale in September 2001 is of no moment since the evidence indicates that Respondent did not acquire the domain name until December 2002.
 The August 16, 2005, letter from Respondent to Complainant’s counsel states “Upon your request, please find below an estimate of the cost Eggo Innovation Consultants S.L. would incur for a name change.” See Complaint, Exhibit 5.