Nominet UK Dispute Resolution Service

DRS 05861

General Mills Marketing Inc -v- Another.com Limited

Decision of Independent Expert

a.	Parties

Complainant:	General Mills Marketing Inc
Country:	US

Respondent:	Another.com Limited
Country:	GB

b.	Domain Name

greengiant.co.uk (the “Domain Name”)

c.	Procedural Background

Definitions used in this decision have the same meaning as set out in the Nominet UK Dispute Resolution Service Policy Version 2, September 2004 (the “Policy”) and/or the Nominet UK Dispute Resolution Service Procedure Version 2, September 2004 (the “Procedure”) unless the context or use indicates otherwise.  

Nominet received hard copies of the Complaint in full on 7 July 2008 and notified the Respondent of the Complaint by letter, fax and e-mail dated 8 July 2008.  Letters were sent to the contact address provided by the Respondent and also to the Respondent’s registered office address (the address used in the Complaint).  E-mails were sent to the contact address provided by the Respondent and to postmaster@greengiant.co.uk.

On 8 July 2008 Nominet received a mail delivery failure message for the e-mail sent to postmaster@greengiant.co.uk.  On 15 July 2008 the letter sent to the contact address provided by the Respondent was returned undelivered.

No Response was received from the Respondent by the required deadline of 30 July 2008 and Nominet so informed the Complainant and the Respondent by letter and by e-mail dated 1 August 2008.  On 1 August 2008 Nominet received a mail delivery failure message for the e-mail sent to postmaster@greengiant.co.uk.  On 8 August 2008 the letter sent to the contact address provided by the Respondent was returned undelivered.

In the circumstances the dispute did not proceed to informal mediation.  

Nominet received the appropriate fee from the Complainant on 11 August 2008 for a decision of an expert pursuant to §7 of the Policy.  

Steve Ormand, the undersigned, (the “Expert”) confirmed to Nominet on 12 August 2008 that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.

d.	Procedural Issues

The Policy and the Procedure have been superseded by Version 3 with effect from 29 July 2008.  However, §14b of the Policy and §23b of the Procedure state “The Respondent will be bound by the Policy and Procedure which are current at the time the Dispute Resolution Service is commenced until the dispute is concluded.”  Thus, Version 2 of the Policy and Procedure apply to this Complaint. 

Nominet notified the Respondent of the Complaint in accordance with §2a of the Procedure.  

E-mails to postmaster@greengiant.co.uk were returned as “undeliverable”, but no such message was received in respect of e-mails sent to the contact e-mail address provided by the Respondent.  

Letters sent to the contact address provided by the Respondent were clearly not delivered.   Under §2e of the Procedure, Nominet’s letters to the Respondent’s registered office address are deemed to have been received by the Respondent unless Nominet or the Expert decide otherwise.  There is no evidence before the Expert to suggest that these letters were not received.  

There is a successful transmission report for the fax sent to the Respondent on 8 July 2008.

It is clear that Nominet have taken all necessary steps required by the Procedure to contact the Respondent.

There is no evidence before the Expert to indicate exceptional circumstances that prevented the Respondent from submitting a Response to the Complaint within the required time period or which should lead the Expert to take any action other than to proceed to a Decision on the Complaint pursuant to §15b of the Procedure.  Accordingly, the Expert will now proceed to a Decision and is entitled, pursuant to §15c of the Procedure, to draw such inferences from the Respondent’s failure to comply with the Policy or the Procedure as the Expert considers appropriate.

e.	The Facts

The Expert accepts the following as fact.

Complainant

The Complainant is a multi-national corporation based in the USA.  It has a wholly owned UK subsidiary General Mills UK Limited.  

The Complainant’s GREEN GIANT products have been sold in the UK since 1960.  Its products include canned sweetcorn and other vegetables.  The canned sweetcorn product is the number one brand in the UK having a 66.5% market share.  There is a very high public awareness of the brand in the UK. 

The Complainant is the registered proprietor of trade marks in Europe and the UK incorporating the name GREEN GIANT which pre-date the registration of the Domain Name.  The Complainant also holds the registration of a number of websites that incorporate this name.

Respondent

The Respondent registered the Domain Name on 12 January 2000.  

The Respondent is a company incorporated in England and Wales on 4 November 1998 with a registered office at the address used in the Complaint.

f.	The Parties’ Contentions

The Complainant’s and Respondent’s submissions are set out and/or paraphrased as appropriate below.

The Complaint

The Complainant contends that it has Rights in the name GREEN GIANT, which is identical to the Domain Name, because:
a)	The Complainant and its UK subsidiary are the owners and authorised users respectively of the GREEN GIANT brand.  The Complainant owns the following trade mark registrations (details provided in the Complaint):
i.	UK trade mark number 1342601 for the words GREEN GIANT;
ii.	UK trade mark number 950603 for the words GREEN GIANT and accompanying image;
iii.	European Community Trade Mark number E507855 for the words GREEN GIANT.
b)	GREEN GIANT was first registered as a trade mark in the USA in 1959.
c)	GREEN GIANT has established itself as one of the most famous brands selling canned sweetcorn and other vegetables (evidence is provided in the Complaint of a range of products sold under the GREEN GIANT name).
d)	The Complainant owns a number of websites (a list of 14 websites is provided in the Complaint) including domain names which were registered before the Respondent registered the Domain Name, these being:
i.	green-giant.co.uk – registered 1 August 1996;
ii.	greengiant.com – registered 4 May 1995;
iii.	green-giant.com – registered 26 July 1995.
e)	As a trade mark for canned vegetables, the words GREEN GIANT are unusual, distinctive and unique.  As a result of its business and popularity, the Complainant has established a valuable and worldwide reputation.  It owns considerable goodwill in the mark GREEN GIANT.  For example: 
i.	GREEN GIANT sweetcorn has a 66.5% market share in the UK (IRI/TNS data for week ending 17 May 2008 provided in the Complaint);
ii.	The GREEN GIANT brand has 24% household penetration, meaning that 24% of all UK households purchase GREEN GIANT sweetcorn (IRI/TNS data for week ending 17 May 2008 provided in the Complaint);
iii.	A UK study by the research company IPSOS in December 2006 showed that 98% of people surveyed were aware of the brand GREEN GIANT (data provided in the Complaint).
f)	On the above basis, the Complainant has for many years owned substantial rights in the GREEN GIANT mark which is enforceable under English law (under registered trade mark law and the common law of passing off) and in other countries.

The Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration because:
a.	The Respondent is not connected to the Complainant in any way.  The Respondent registered the Domain Name without the Complainant's consent, around 75 years after the GREEN GIANT mark was first used in the USA and 40 years since it was first used in the UK when rights and goodwill in the mark were acquired.
b.	The Respondent must have been aware of the Complainant's rights in the mark when it registered the Domain Name because: 
i.	The GREEN GIANT mark is a very famous mark, including on the Internet;
ii.	Domain name, website and trade mark searches would have disclosed the Complainant's rights;
iii.	The Respondent's website previously featured a link to the Complainant's website www.greengiant.com;
iv.	In light of the mark's reputation, it is not credible that the Respondent came up with the Domain Name independently.
c.	None of the factors in Policy §4 apply.  In particular the Respondent has: 
i.	Not used or made demonstrable preparations to use the Domain Name (or a similar domain name) in connection with a genuine offering of goods or services;
ii.	Not been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
iii.	Not made legitimate non-commercial or fair use of the Domain Name.
d.	In addition to the above, Policy §4.a.ii does not apply as the Domain Name is neither generic nor descriptive.
e.	The Domain Name has been registered and used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's rights because:
i.	As long as the Domain Name is in the Respondent's hands, the Complainant has no control over its ownership or use. This is inherently detrimental.
ii.	In particular, the Complainant is concerned that the Respondent's activities are tarnishing the allure of its brand and services.
iii.	The Respondent's registration and use of the Domain Name will dilute the distinctiveness of the GREEN GIANT mark.
f.	The Domain Name was registered and/or has been used in a manner which has taken unfair advantage of and/or was unfairly detrimental to the Complainant's rights under three of the headings set out in §3 of the Policy:
Policy §3.a.i.A
i.	The Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs associated with acquiring the Domain Name.
ii.	The Respondent clearly had the Complainant's well-known GREEN GIANT mark in mind when it registered the Domain Name, and as the Domain Name is identical to the distinctive and well-known GREEN GIANT mark it could only be registered and used legitimately with the Complainant's consent.
iii.	The website does not offer any goods or services.
iv.	The Respondent's intent in registering the Domain Name was clearly to sell it for a value far exceeding its out of pocket expenses as shown by the following emails (provided in the Complaint):
1.	The Claimant emailed the Respondent with a view to purchasing the Disputed Domain Name.  By an email dated 10 April 2007, the Respondent replied to ask "how much you are willing to pay for this domain/s…Our prices start from £4,000".  The figure of £4,000 is clearly in excess of the Respondent's costs in registering the Domain Name.
2.	By an email dated 16 April 2007, the Respondent added that "the price is set for that domain name, given the rarity desirability of a number of the domains we have registered they are only sold for a minimum of £4,000 each".  Therefore it appears that the price of the Domain Name was based on the substantial goodwill (owned by the Complainant) in the name GREEN GIANT.
3.	Finally, by an email dated 17 April 2007, the Respondent’s representative stated "I've just spoken to the M.D. and I'm afraid that he doesn't want to let this particular domain go for less than £10,000".
Policy §3.a.ii 
v.	Members of the public are bound to have been confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, and it should be inferred that they have.  The Respondent's use of the Domain Name previously had a link to the Complainant's website www.greengiant.com.
vi.	In particular, confusion is inevitable because the Domain Name is identical to the GREEN GIANT mark and the website contains no indication that the Respondent is not connected with the Complainant.
vii.	Further, confusion is very likely to occur and, although Policy §3.a.ii refers to actual confusion (as opposed to a likelihood of confusion), the factors in §3.a are non-exhaustive, and (as has been held in a number of DRS decisions) a likelihood of confusion is also a relevant factor.
Policy §3.a.iii 
viii.	The Domain Name is also part of a wider pattern of cybersquatting.  The Respondent has registered 6476 .co.uk domain names, some of which correspond to other well-known third party trade marks.  The Complainant provides the following examples of domain names registered by the Respondent:
1.	bacardi-and-coke.co.uk;
2.	barbiegirl.co.uk;
3.	barneygumble.co.uk;
4.	blofeld.co.uk;
5.	capedcrusder.co.uk;
6.	c3po.co.uk;
7.	def-leppard.co.uk;
8.	ghostbuster.co.uk;
9.	he-man.co.uk.

The Response

The Respondent did not reply.

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a complainant may not rely on rights in a name or term that is wholly descriptive of the complainant’s business.  The wholly generic domain prefix “www” and the suffix “.co.uk” are discounted for the purposes of establishing whether a complainant has Rights in a name or mark which is identical or similar to a domain name.

The Complainant has demonstrated trade mark rights in the name GREEN GIANT which predate the registration of the Domain Name by almost 40 years in the case of one UK trade mark.  The Complainant has also demonstrated substantial goodwill in, and very high brand awareness of, the mark GREEN GIANT.  

The name GREEN GIANT is a combination of dictionary words which individually are in general everyday use and together have descriptive connotations.  However, the combination of the two words and their use by the Complainant over a long period of time has achieved a level of distinctiveness such that the words have taken on a secondary meaning and, unless they are being used in an obviously descriptive manner, it is clear that the public associate them with the Complainant.  

The words cannot be said to be wholly descriptive of the Complainant’s business.

The Complainant has thus satisfied the first limb of the test by demonstrating that it has strong Rights in the name GREEN GIANT, a name which is identical to the Domain Name save for the generic domain prefix and suffix.

Abusive Registration

Abusive Registration is defined in the Policy as a Domain Name which either:

1.	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
2.	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

In summary, the Complainant alleges Abusive Registration because:

1.	the Respondent is not connected with the Complainant in any way and registered the Domain Name without the Complainant’s consent;

2.	the Respondent must have been aware of the Complainant’s rights when registering the Domain Name;

3.	the registration is abusive under §3a i A of the Policy namely:
“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name”;

4.	the Complainant has no control over the use of the Domain Name and thus its brand and services will be tarnished and the distinctiveness of the mark diluted;

5.	the registration is abusive under §3a ii of the Policy namely:
“Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant”;

6.	the registration is abusive under §3 a iii of the Policy namely:
“The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern”;

7.	none of the factors in §4 of the Policy apply to demonstrate that the Domain Name is not an Abusive Registration.

Complainant’s Relationship to the Respondent

The Expert accepts the Complainant’s assertion that it is not connected with the Respondent in any way and that the Domain Name was registered without the Complainant’s consent. 

On its own neither of these statements indicates Abusive Registration.

Awareness of the Complainant’s Rights and §3 a i A of the Policy

It is a well established principle in previous decisions under the Policy that knowledge of the complainant’s mark at the relevant time is crucial to a successful complaint.  

In DRS 04884 (Maestro International Inc v Mark Adams) the appeal panel considered that a respondent’s statement that he was unaware of the complainant’s trade mark to be “an easy thing to say and difficult to disprove, unless the trade mark in question is a very well-known mark …”.  

In this dispute the Complainant has demonstrated that the GREEN GIANT mark is very well known.  It is in a class that in the Expert’s opinion defeats the argument that the Respondent might have had some other mark of the same name in mind at the time of registration of the Domain Name and it is reasonable to conclude that on the balance of probabilities the Respondent was aware of the Complainant’s trade mark at that time.

Whether the Respondent’s intent at the time of registration was to sell the Domain Name to the Complainant or a competitor, as set out in §3a i A of the Policy, is a difficult thing to show.  The Complainant relies on e-mails from the Respondent and asserts that the demand for £10,000 for the transfer of the Domain Name demonstrates that the Respondent valued the Domain Name on the Complainant’s goodwill in the mark not on its out of pocket expenses.  

Trading in domain names at a profit is not objectionable per se (see the appeal decision in DRS 03078 Jemella Limited v Landlord Mortgages Limited).  Where the registration is not abusive a respondent is free to ask any price he likes and it is up to the complainant to pay it or not.  It is to be expected that where a registrant is approached by a would-be purchaser that the registrant will up the price depending on the value of the domain name to the purchaser.  The crucial question is whether the registrant registered the domain name with knowledge of the would-be purchaser’s Rights and with the intention of selling it to that purchaser at a profit.  

The e-mails provided in the Complaint do not appear to be a complete sequence.  The text of one of the Respondent’s e-mails includes a statement that “Our domains are generally in use for email and other services … However, depending on the circumstances we can sell the domains and ask our users to move their email addresses on to other domains”.  The implication is that there has been expenditure involved in setting up the domain for use “by users” and there will be expenditure in moving those users to another domain.  There is, however, no evidence provided in the Complaint that the Domain Name has ever been in use.  The Complainant states that there was a link at one time to greengiant.com but provides no evidence and the print out provided by Nominet in the Complaint file indicates that the Domain Name was not active around the date of the Complaint.

There is simply not enough for the Expert to reach a conclusion as to the Respondent’s intent.  Accordingly, the Expert turns to the Chivas Test (DRS00292) which states:

Where a respondent registers a domain name:

1.	which is identical to a name in respect of which the complainant has rights; and
2.	where that name is exclusively referable to the complainant; and
3.	where there is no obvious justification for the respondent having adopted that name for the domain name; and
4.	where the respondent has come forward with no explanation for having selected the domain name

it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and secondly that that purpose was abusive.

All four legs of this test are satisfied in this dispute.  It is therefore reasonable for the Expert to conclude that the Respondent registered the Domain Name for an abusive purpose.

Dilution of the Complainant’s Mark and §3 a ii

There is no evidence that the Domain Name is either in use or has been used in a way which has caused confusion.  If the Domain Name has been in use prior to the Complaint the Expert accepts that, given public awareness of the name GREEN GIANT, it is reasonable to conclude that there would have been a likelihood of initial interest confusion.

Since there is no evidence of use of the Domain Name presented in the Complaint, the Expert has not considered whether the Respondent has diluted the distinctiveness of the Complainant’s mark.

§3 a iii

The Expert has considered the domain names cited as examples of a pattern of registrations of well known names or marks in which the Respondent has no apparent rights and finds that:

1.	The registration of these 9 domain names occurred between 14 October 1998 and 13 December 1999 commencing around the time the Respondent was incorporated.  The Domain Name was registered on 12 January 2000.

2.	The names chosen by the Respondent for these domain names incorporate names which have the potential to be subject to Rights held by third parties.

3.	These 9 domain names plus the Domain Name are a small proportion of the Respondent’s portfolio of 6476 .co.uk domain names.

4.	The Respondent states in one of its e-mails to the Complainant ”.. given the rarity desirability of a number of the domains we have registered they are only sold for a minimum of £4,000 each”.

In the Expert’s opinion the domain names do represent a pattern and the Domain Name is part of that pattern, both in the nature of the name chosen and the timeframe in which it was registered.  It is highly unlikely to be a pattern of registrations that includes a majority of the Respondent’s domain name portfolio but nevertheless it is a pattern that indicates the registration of names that may be abusive. 

§4

It is to be expected that the Complainant does not present evidence to show that the Respondent has not:

1.	used or made preparations to use the Domain Name in a genuine offering of goods or services;

2.	been commonly known by the name GREEN GIANT or connected with a similar mark;

3.	made legitimate non-commercial or fair use of the Domain Name.

It considerably easier to present evidence to demonstrate something exists or has happened than to present evidence to demonstrate the opposite.  
The Expert will not consider the Complainant’s assertions under this head any further in the absence of a response by the Respondent.

Conclusion

The Expert finds that the Respondent registered the Domain Name for the purpose set out in §3a i A of the Policy, or for some other abusive purpose, and that registration is part of a pattern of registrations which may also be abusive.

h.	Decision

In light of the foregoing findings, namely that the Complainant has Rights in a name which is identical to the Domain Name, and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, greengiant.co.uk, be transferred to the Complainant.

Signed: Steve Ormand	Date: 	29 August 2008