CSC Brands LP v Kakumba Julius

WIPO Case No. DCO2024-0022

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CSC Brands LP v. Kakumba Julius

Case No. DCO2024-0022

1. The Parties

The Complainant is CSC Brands LP, United States of America, represented by SILKA AB, Sweden.

The Respondent is Kakumba Julius , Uganda.

2. The Domain Name and Registrar

The disputed domain name <campbellsoup.co> is registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2024. On March 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy Purposes/ Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 21, 2024.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 27, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 19, 2024.

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The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 26, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant manufactures and markets easy-to-prepare foods, including soups, baked snacks,
vegetable-based beverages, and chocolate products. It has around 14.5 thousand employees in North
America. Its products are sold in more than 120 countries worldwide. The Complainant reported net sales of
USD 9.4 billion in the fiscal year 2023 (Annex 4). The Complainant is counted by third party sources among
the world’s top 5 soup brands (Annex 8). It has a strong social media presence with 1.6 million followers on

Facebook, 1.1 million likes on TikTok, and almost 100.000 followers on Pinterest (Annex 7).

The Complainant owns trademarks in the term CAMPBELLS, including the following:

- United States (“US”) trademark registration no. 1839540 CAMPBELL’S (word), registered on June 14,

1994, for goods in Class 30;

- US trademark registration no. 2052959 CAMPBELL’S (word), registered on April 15, 1997, for goods in

Class 29;

- US trademark registration no 48664 CAMPBELL’S (device), registered on January 9, 1906, for goods in

Class 29.

The Complainant holds a number of domain names consisting of or including the CAMPBELL’S trademark,
including <campbells.com>, <campbellsoupcompany.com>, <campbellsoup.com>, <campbells.us> and
<campbellsoup.us> (Annex 6).

The disputed domain name was registered on June 19, 2023. It currently redirects Internet users to one of the official websites of the Complainant, namely to <campbellsoupcompany.com> (Annex 9). The Respondent has configured the disputed domain name with an MX (mail exchange) record (Annex 12), which is a prerequisite for sending and receiving emails from a mail server under the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

On the first element, The Complainant points to its multiple trademark registrations for the term CAMPBELL’S. The second level of the disputed domain name includes the trademark in full, only followed by the letters “oup”, which will, according to the Complainant, be read by the internet user as “Campbell’s soup”, just as in one of the Complainant’s domain names, <campbellsoupcompany.com>. Thus, the Complainant’s trademark is clearly recognizable within the disputed domain name. In addition, the .co country code Top Level Domain (“ccTLD”), being a standard registration requirement, needs to be disregarded.

On the second element, The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent does not own any registered or unregistered trademark rights in the term CAMPBELL’S. It has not been licensed or authorized by the Complainant to use this term either. The Respondent has never been known under the disputed domain name, nor has he made any

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demonstrable preparations for any bona fide offer under it. On the contrary, the Respondent’s composition
of the disputed domain name and its use to redirect to an official site of the Complainant creates a false

impression of being linked to the Complainant.

On the third element, the Complainant claims that the Respondent has registered and used the disputed
domain name in bad faith. The Complainant points to the goodwill and recognition enjoyed by its
CAMPBELL’S trademark, which has been registered and used for more than a century, its renown having
been recognized in a number of UDRP decisions. Considering the easily accessible registration and use
information of the CAMPBELL’S brand as per Annexes 10 and 11, to which the Complainant points, the
Respondent must have known about the Complainant’s rights. On use in bad faith, the Complainant submits
that the Respondent has, for commercial gain, intentionally attempted to attract Internet users by creating a
likelihood of confusion. The Respondent, by the redirect, capitalizes on the Complainant’s brand’s renown
as exemplified in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,
(“WIPO Overview 3.0”), section 3.1.4. The Complainant adds that the Respondent’s configuration of the
disputed domain name with an MX record is indicative of the Respondent’s intention to use the disputed
domain name by engaging in phishing or other fraudulent activities capitalizing on the similarity of the
disputed domain name with the well-known CAMPBELL’S brand. In this vein, the Complainant relies on prior
UDRP case law as in TEVA Pharmaceutical Industries Limited v. Name Redacted, WIPO Case No.

D2022-3791.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms, here “oup”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

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legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has registered the disputed domain name the Complainant in order to create a likelihood of confusion for Internet users.
incorporating the Complainant’s trademark which the Panel accepts as being well-known. Given the
available record and the circumstances of the case presented by the Complainant, it is inconceivable that the

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity, here claimed impersonation/passing off as the Complainant by redirecting from the disputed domain name to an official website of the Complainant, constitutes bad faith. WIPO Overview 3.0, section 3.4. This all the more, as this happens in combination with the likely preparation of phishing activities through the registration of MX records in respect of the disputed domain name. In this respect, the Panel agrees with the decisions of earlier panels which the Complainant has cited. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <campbellsoup.co> be transferred to the Complainant.

/Andrea Jaeger-Lenz/
Andrea Jaeger-Lenz
Sole Panelist
Date: May 7, 2024