Del Monte Foods, Inc. just lost a UDRP on three domain names delmonteexpress.com, delmontefarm.com and delmontefarms.com
The three member UDRP panel of Robert A. Badgley, Michelle Brownlee and Gregory N. Albright
Complainant is a leading purveyor of food and beverages in the United States, and has used the mark DEL MONTE for 120 years to identify and distinguish its various offerings. Some of Complainant’s DEL MONTE marks have been registered for more than 40 years. Complainant asserts, and there is little reason to doubt, that its DEL MONTE mark is famous.
The domain owner, Michael Kirch is the owner of Kensington Capital Group, Inc., a firm based in Monterey, California. Kirch and Kensington Capital Group, Inc. will be referred to interchangeably as “Respondent”.
Respondent owns and operates a real estate business based in Monterey called Kensington Realty Group, Inc. Respondent’s main website is located at “www.4krg.com”.
That website welcomes visitors to “a unique, full-service real estate company serving the Monterey Peninsula & beyond”.
Respondent registered the Domain Names on August 22, 2006 (), May 12, 2010 (), and January 5, 2013 ().
The Domain Names resolve to Respondent’s website at “www.4krg.com”. Respondent claims that he registered these Domain Names because the term Del Monte “is readily recognizable by people who live on the Monterey Peninsula,”
On February 6, 2008, Kirch applied to register with the Secretary of State of California a corporation named Del Monte Realty, Inc. That corporation is still active. Respondent registered another domain name, not at issue in this case, , on December 11, 2006. That domain name resolves to a website which states in part:
“If you are retired or nearing retirement and have a significant amount of wealth tied up in real estate, you should consider selling to preserve your wealth, provide liquidity and increase your income. Kensington Realty Group, an affiliate of Del Monte Realty, will represent you with the goal of maximizing your investment return.”
On July 11, 2007, Respondent filed for fictitious business names Del Monte Farms and Del Monte Express, and renewed these fictitious business names on July 9, 2012. Respondent asserts that he did so “with the sole purpose of starting a business with the said names”. Respondent also ordered business cards, and, on July 2, 2007, filed a trademark application with the United States Patent & Trademark Office (“USPTO”) for the word mark DEL MONTE FARMS. The goods and services named in the application were “cut vegetables” and “cut fruits,” and the claimed first use in commerce was June 15, 2007.
According to Respondent, Complainant sent Respondent an “aggressive” letter in 2007 threatening action, and Respondent did not respond to said letter. On October 5, 2007, the USPTO refused Respondent’s trademark application because the proposed mark, coupled with the proposed goods and services, created a likelihood of confusion with Complainant’s family of DEL MONTE and DEL MONTE-formative marks.
“”The Panel finds that Complainant has not proven that Respondent more likely than not registered the Domain Names in bad faith. In this vein, the Panel emphasizes that the Policy is designed to address clear cases of cybersquatting, and the concept of bad faith under the Policy is not coextensive with concepts of trademark infringement under the U.S. Lanham Act or otherwise.
On this record, which is considerably less developed than one would expect in a judicial proceeding, the Panel concludes that Respondent has offered a somewhat plausible explanation for his conduct, including the fact that he sells real estate in an area that includes the Del Monte Forest and has been working on a business plan to start a grocery business specializing in products from the Del Monte region which will offer a delivery service called Del Monte Express.
Further, the Panel observes that Respondent, despite a multi-year delay in actually launching a business using the Domain Names, has taken a number of steps (incorporating a company called Del Monte Farms, Inc., filing a trademark application for the word mark DEL MONTE FARMS, etc.) which a run-of-the-mill cybersquatter is highly unlikely to have taken.
Finally, the Panel notes that Respondent operates a legitimate real estate business, has since June 2007 owned Reg. No. 3,256,110 (issued by the U.S. Patent and Trademark Office) for the DEL MONTE REALTY service mark, and has owned the domain name Delmonterealty.com for eight years, all of which further enhance the impression that Respondent is not a typical cybersquatter.
On a balance of probabilities, therefore, the Panel concludes that, while a trademark infringement suit under the Lanham Act might yield a different outcome, there is enough doubt in this limited record to reject, in view of the Policy’s limited scope, the Complaint for failure to establish bad faith registration and use.
Accordingly, the Complaint fails and the Panel need not address the other elements required for a transfer under the Policy.
