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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Auntie Anne’s, Inc. v. aldhaheri business development

Case No. D2006-0995

 

1. The Parties

The Complainant is Auntie Anne’s, Inc., Pennsylvania, United States of America, represented by Neal & McDevitt, United States of America.

The Respondent is aldhaheri business development, c/o Omair Aldhaheri, of Abudhabi, United Arab Emirates.

 

2. The Domain Name and Registrar

The disputed domain name <auntieannesme.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2006. On August 5, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On August 7, 2006, Register.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2006.

The Center appointed Harini Narayanswamy as the Sole Panelist in this matter on September 25, 2006. 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 is Aunties Anne’s, Inc., a company which is incorporated in the state of Pennsylvania, United States of America. It is the owner of the AUNTIE ANNE’S trademark, famous for its pretzel and other food products and services. It has been continuously using this mark in interstate commerce from about the year 1988.

The Complainant currently owns several variants of this trademark, and some of these are registered marks. The trademark and design numbers 1,736,871 and 1,740,051 were issued to the Complainant in December 1992. The Complainant also owns several domain names and operates the “.com” version of its trademark, at an online site using the domain name <auntieannes.com>.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims it is the sole and exclusive owner of the AUNTIE ANNE’S trademark and various formatives of the trademark. It asserts that its mark is distinctive due to long and continuous use in commerce and that it has expended millions of dollars advertising and promoting its products. The trademark, according to the Complainant, has now reached ‘incontestable’ status under the U.S. Lanham Act 15 U.S.C § 1065, as it continues to be used subsequent to five years of registration.

The Complainant states that the Respondent has deliberately infringed and diluted its valuable trademark by registering a domain name which is confusingly similar to its trademark. According to the Complainant, the disputed domain name, which contains the term “me” with the trademark, does not serve to differentiate the domain name from the trademark.

The Complainant cites previous Policy decisions and McCarthy on Trademarks & Unfair Competition § 23:50(4th ed. 1998), in support of its contention that the use of certain words, when added to the mark are construed to be non-distinctive. The Complainant relies on the following decisions: Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; E.I. du Pont de Nemours and Company v. Richi Industries S.r.l, WIPO Case No. D2001-1206; and Utensilerie Associate S.p.A v. C& M, WIPO Case No. D2003-0159.

The Complainant further mentions that addition of the “.com” suffix to the domain name will not affect the test of ‘likelihood of confusion’. Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053.

The Complainant maintains that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:

The Respondent is not the owner of any registered or common law trademark in the United States containing the term AUNTIE ANNE’S. The Respondent, as an individual or as a business has not been commonly known by the Domain Name.

There is no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Name or a name corresponding to the domain name in connection with a bona-fide offering of goods and services. The Respondent is not making any legitimate non commercial or fair use of the Domain Name.

The Respondent has been using the Domain Name, allegedly for commercial gain, which misleads Internet users by providing links to divert Internet users to other websites. The Complainant has substantiated these assertions with print out of such offending web pages.

The Complainant has further furnished a list of domain names which it owns, many of which contain the AUNTIE ANNE’S mark. According to the Complainant, this provides evidence that the Complainant, and not the Respondent, has the legitimate interests in the mark.

<aainfosource.com> <aannes.com> <auntannies.com> <auntieanne.com> <auntieannes.co.uk> <auntieannes.com> <auntieannes.org> <auntieannes.net> <auntieannescafe.com> <auntieannesinc.com> <auntieannespretzels.com> <cookiefarm.net> <creamo.com> <creamo.net> <freshhotpretzels.com> <freshpretzels.com> <hotpretzels.com> <pretzeljapan.com> <pretzelperfect.com>.

The Complainant further states that the Respondent used to be a licensee of the Complainant. However, no details of the license or terms thereof have been provided by the Complainant. The Complainant however asserts that even when the Respondent was a licensee of the Complainant, the Respondent was not authorized to use the AUNTIE ANNE’S trademark in any manner.

The Respondent’s use of the AUNTIE ANNE’S trademark is not legitimate use in the absence of any express permission from the Complainant. To support these contentions, the Complainant cites the following decisions: Allen Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case No. D2002-0799, Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

The Respondent’s use of the domain name, creates a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and such use, according to the Complainant, falls under bad faith use enumerated in paragraph 4(b)(iv) of the Policy .

Given the Complainant’s ongoing business operations in the United States of America and in other countries, its extensive advertising and promotion of its products, the Complainant claims, its trademarks are well known worldwide. The Complainant states that it has not authorized the Respondent to use the Complainant’s trademark. Further, no disclaimer is displayed on the Respondents web site, stating that it is not associated with the Complainant.

The Respondent uses the Complainant’s trademark in the domain name to divert Internet users to other competitor sites. The Respondent’s web site which functions like a search engine potentially derives “click through” revenue from use arising from confusion of users.

According to the Complainant, by using the domain name <auntieannsme.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. The Complainant cites the UDRP decisions DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, and Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031, which hold that such use is considered use in bad faith.

The Complainant states that it had tried to contact the Respondent for a settlement concerning the transfer of the Domain Name. The Respondent had ignored this proposal made by the Complainant. The Complainant requests for a transfer of the Domain Name.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has to establish these three elements to avail of the remedy requested:

A. The Respondent’s Domain Name is Identical or Confusingly Similar to a trademark or service mark in which the Complaint has rights; and

B. The Respondent has no rights or legitimate interests in respect of the Domain Name; and

C. The Respondent’s Domain Name has been registered and is used in bad faith.

The Panel now discusses each of the above elements.

A. Identical or Confusingly Similar

The Complainant has established its rights in the “AUNTIE ANNE’S” trademark and has provided sufficient evidence that trademark is used in commerce and has acquired a distinctive character. The Panel now has to consider whether the Domain Name, which consists of the Complainant’s trademark AUNTIE ANNE’S along with the term “me” is confusingly similar to the trademark.

Words such as ‘me’, ‘my’ or ‘source’ added to a trademark, have been found to heighten the confusion, as such terms signify origin. When used in conjunction with the trademark it could be interpreted as goods or service emanating from the same source. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Admin www@promotechnology.com +41227347210promo, WIPO Case No. D2004-1040. It is reasonable to infer that an Internet user who encounters the Domain Name may anticipate the Domain Name originates from the Complainant and is likely to associate it with the Complainant.

It is likely that the ‘me’ adjunct, in this Domain Name, probably signifies ‘Middle East’, as the Respondent is located in Abu Dhabi in the Middle East. Other cases where the letters ‘me’ were added to the trademark, were Permatex, Inc. v. Mounir Mati/ Glob2.com and Mohammad Khalid, WIPO Case No. D2005-0954, and in Dr.Ing. h.c.F Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. In these cases although a hyphen preceded the letters ‘me’, the Respondents were located in the Middle East and had used the letters ‘me’ to signify the Middle East. It is accordingly anticipated that the letters ‘me’ in the Domain Name at issue signify the “Middle East”. In line with the reasoning in those cases cited above, the Panel finds that the addition of the letters ‘me’ does not serve to distinguish the Domain Name from the trademark.

The Panel finds the Domain Name is confusingly similar to the Complainant’s trademark. The Complainant has fulfilled the requirement in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has provided several reasons to indicate the Respondent has no rights or legitimate interest in the Domain Name. The Panel finds, from the material on record, that the Respondent is not known by the Domain Name. The Respondent is not using the Domain Name in connection with a bona fide offering of goods and services and consequently has no common law or statutory rights in the name.

The Complainant states that the Respondent was a former licensee of the Complainant, but was never authorized or allowed the use of its trademark. Whether a reseller has the authority to use a licensor’s trademark in a domain name has been discussed in earlier cases like Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc v. Credit Research, Inc., WIPO Case No. D2002-0095. It has been held in these cases, that an agent or reseller has no rights or authority to use the trademark or to register domain names that reflect the trademark without the knowledge or express permission of the trademark holder.

The right to resell products does not give an entitlement to use the trademark, See Motorola Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079. It is a well established rule is that a “licensee’s use [of a trademark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself”, T.J McCarthy, McCarthy on Trademarks and Unfair §18:52 (4^th Ed. 2000). The Respondent’s use of the Complainant’s trademark, in the absence of any specific agreement, and further more to use it to promote and sell competitive goods definitely does not constitute legitimate use. See Nikon Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774.

The Complainant has provided a list of several domain names incorporating various variants of its trademark, which the Complainant alleges, demonstrates its legitimate rights vis a vis the Respondents lack of rights in the Domain Name. The Panel believes, with due respect to the Complainant’s argument, that mere registration of domain names which incorporate variants of trademarks, is not a factor that can be considered while determining a party’s legitimate rights in the Domain Name.

Many ‘cyber squatters’ have been known to register numerous domain names incorporating many different variations of trademarks. It is the manner of use, and in particular bona fide use which determines legitimate rights. However, as discussed above, the Respondent’s use has been found as not a legitimate or bona fide use, whereas the Complainant has clearly demonstrated that it is the bona fide user of the trademark in commerce.

The Panel accordingly finds that the Respondent does not have any rights or legitimate interests in respect of the domain name, and the Complainant has fulfilled the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s adoption and use of the mark precedes the registration of the Domain Name. It can be inferred that since the Respondent was a licensee of the Complainant, he had notice of the trademark when the Domain Name was registered.

The AUNTIE ANNE’S trademark is a distinctive trademark and it can be inferred that the Domain Name may have conceivably been registered for the renown trademark value. Given the fame and goodwill associated with the “AUNTIE ANNE’S” trademark, it is impossible to conceive of a circumstance in which the Respondent could legitimately use the Domain Name without creating a false impression of association with the Complainant. The registration of a widely-known trademark of which the Respondent must reasonably have been aware, constitutes opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Furthermore, a domain name that incorporates a well-known trademark which is used to direct visitors to unconnected web sites and in particular to competitor sites, has been held in many UDRP cases to constitute bad faith use of the domain name. Some previous decisions which have held that such intention by the Respondent to divert Internet users to its web site constitutes bad faith use are: International Business Publishers, Inc. v. The Center for Business Intelligence, LLC, WIPO Case No. D2001-0181 and Lifetime Products, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0719. Clearly, the Respondent’s use of the Domain Name, as demonstrated by the Complainants falls under this category.

The Panel concludes, on the basis of the materials on record, that the Respondent has registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b) of the Policy. The Complainant has fulfilled the requirement under paragraph 4(a)(iii) of the Policy.

 

7. Decision

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

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Harini Narayanswamy
Sole Panelist

Dated: October 9, 2006