The UDRP that Monogram Foods, an established producer of food production, filed at the WIPO failed to achieve its intended goal: to get the domain MonogramFood.com.
Operating from MonogramFoods.com, the company stated in the UDRP that it just celebrated its 20th anniversary, with over $350 million in capital investments. In 2021, it surpassed $1 billion in revenue.
The filing claimed common law rights to the MONOGRAM FOODS mark, whereas the disputed domain uses the singular form of the second word. The Forum panelist did not view any of this as evidence of a mark that is known in any aspect. In fact, the sole panelist questioned the company’s very existence on the internet beyond the current, live web site!
Said the forum panelist:
“The only evidence provided in support of those claims are copies of pages from Complainant’s website. The webpages broadly restate some of those claims, alleging that Complainant was founded in 2004, has traded for 20 years, and is “a strategic food manufacturer focused on the co-manufacturing, private label, and food service channels throughout the United States.
The Panel notes that the pages exhibited are essentially current, all dated September 10, 2024. There is no Internet Archive (“Wayback Machine”) information relating to the website, or other historical documentation. There are no incorporation documents for Complainant company. There is no proof of use of the claimed trademarks before creation of the disputed domain name, or at all. There is no evidence of media recognition or of promotional material or advertising. There is no sworn evidence of any kind.”
Maybe the panelist did not try hard enough; while there are very few archived pages on Archive.org from MonogramFoods.com, here is a page from 2016 alongside a cashed Twitter account.
The live X (formerly Twitter) account MonogramFoods contains a wealth of information and content about the company’s activity using its brand through the years.
Final decision: Deny the transfer of the domain MonogramFood.com to the Complainant. The Respondent did not file a response.
Copyright © 2024 DomainGang.com · All Rights Reserved.Monogram Food Solutions, LLC v. Robert Bruce
Claim Number: FA2410002122938
PARTIES
Complainant is Monogram Food Solutions, LLC (“Complainant”), represented by Nicole Berkowitz Riccio of BAKER, DONELSON, BEARMAN, CALDWELL & BERKOWITZ, PC, Tennessee, USA. Respondent is Robert Bruce (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is monogramfood.com, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 31, 2024; Forum received payment on October 31, 2024.
On November 4, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the monogramfood.com domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@monogramfood.com. Also on November 4, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts common law trademark rights in MONOGRAM and MONOGRAM FOODS and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The factual findings pertinent to the decision in this case are that:
1. Complainant sells a variety of foodstuffs under the names MONOGRAM and MONOGRAM FOODS;
2. the disputed domain name was registered on September 10, 2024; and
3. the disputed domain name does not resolve to an active website but has been used as part of an email address imitating that of an employee of Complainant and for a fraudulent purpose.
DISCUSSION
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding based on Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Identical and/or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.1 Complainant does not assert ownership of any registration. However, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered (common law) trademark rights and UDRP panels have consistently found that a governmental registration is not required so long as a complainant can establish common law rights.
Proof of such common law rights becomes the critical aspect of these proceedings. Complainant must prove that it has rights in MONOGRAM and/or MONOGRAM FOOD established through use and public recognition of those words such that they have come to acquire secondary meaning. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)2, asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights?” The consensus viewpoint of panelists includes the following statement:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
This is exemplified by cases such as Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) finding that the complainant had established common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.” 3
In the present proceedings the key submissions are that Complainant uses MONOGRAM and MONOGRAM FOODS,
“… in connection with a variety of food services, such as co-manufacturing, private label, and food-service channels for chicken products, frozen entrees, snacks, meat snacks, assembled sandwiches, bacon products, baked goods, and other food products across the United States.
[Complainant] provides food services across the United States, with physical plant or office locations in Minnesota, Iowa, Wisconsin, Indiana, Massachusetts, Virginia, and Tennessee.
[Complainant] has ten company-owned facilities, each of which provide strategic food manufacturer focused on the co-manufacturing, private label, and food service channels, distributing a wide range of food products, including chicken products, frozen entrees, snacks, meat snacks, assembled sandwiches, bacon products, baked goods, and other food products, to retail grocery stores, convenience stores, club stores, vending and corrections facilities, drug stores, military locations, foodservice locations, Dollar Stores, and more. [Complainant] just celebrated its 20th anniversary, with over $350 Million in capital investments. In 2021, [Complainant] surpassed $1 Billion in revenue.
…
[Complainant] has continuously marketed, advertised, sold, and offered for sale its food-related goods and services since 2004.
The only evidence provided in support of those claims are copies of pages from Complainant’s website. The webpages broadly restate some of those claims, alleging that Complainant was founded in 2004, has traded for 20 years, and is “a strategic food manufacturer focused on the co-manufacturing, private label, and food service channels throughout the United States.”
The Panel notes that the pages exhibited are essentially current, all dated September 10, 2024. There is no Internet Archive (“Wayback Machine”) information relating to the website, or other historical documentation. There are no incorporation documents for Complainant company. There is no proof of use of the claimed trademarks before creation of the disputed domain name, or at all. There is no evidence of media recognition or of promotional material or advertising. There is no sworn evidence of any kind.
The Panel is entitled to accept reasonable allegations of fact but is unable to find proof of common law rights based only on conclusory or unsubstantiated statements or, for example, on the contemporary state of a website (see, for example, eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”)).
The Panel therefore finds that Complainant has failed to show trademark rights in a term which is either identical or confusingly similar to the disputed domain name. Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
No findings required.4
Registration and Use in Bad Faith
No findings required.
DECISION
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the monogramfood.com domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 27, 2024
