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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chocoladefabriken Lindt & Sprьngli AG v. Jules Mass & Yuan Yuan Chou

Case No. D2007-0446

 

1. The Parties

The Complainant is Chocoladefabriken Lindt & Sprьngli AG, Switzerland, represented by Mayer, Brown, Rowe & Maw, Germany.

The Respondents are Jules Mass & Yuan Yuan Chou, North Bergen, New Jersey, United States of America (for convenience referred to as “the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <ghirardellichocolates.com> (the “Domain Name”) registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 27, 2007, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue. On March 27, 2007, eNom Inc. 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 April 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2007.

The Center appointed William P. Knight as the sole panelist in this matter on May 15, 2007. 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 Domain Name was registered on November 29, 2003.

The Complainant is well known as a Swiss chocolatier which, according to the Complaint, has been in business since 1845. According to the Complaint, the Complainant acquired one of the oldest chocolate makers in the United States of America, referred to as the “Ghirardelli Chocolate Company”, in 1998 and with it the benefit of that company’s reputation arising from continuous operation since 1852, as well as numerous trademark registrations for GHIRARDELLI and GHIRARDELLI CHOCOLATE, now in the name of the Complainant, including United States registered trademarks Nos. 205776 (registered November 17, 1925), 438352 (registered April 13, 1948), 1376695 (registered December 31, 1985), 2615700 (registered September 3, 2002) and 2632256 (registered October 8, 2002), each which is in respect of or includes as its most prominent feature the mark “GHIRARDELLI”).

The Complainant has registered in its name a number of domain names containing the word “ghirardelli”, including the following:

<ghirardelli.com> on June 24, 1998, 1997;

<ghirardelli.biz> on November 7, 2001;

<ghirardelli.info> on October 18, 2001;

<ghirardelli.com.mx> on June 30, 2005;

<ghirardelli.us> on April 24, 2002; and

<ghirardellishop.com> on July 12, 1999

all but one of which predate the registration date of the Domain Name. Each of these other than <ghirardelli.biz>, resolves to a single website “www.ghirardelli.com” by means of which the Complainant provides information and services regarding its Ghirardelli products and their distribution and use. The remaining domain name <ghirardelli.biz> resolves to the corporate website of the Complainant at “www.lindt.com”.

The Domain Name is being used only as an “eWebMall with links to websites of various other suppliers of a wide range of products and services, but was formerly being used as a “parking website” or “landing website” which included redirections to suppliers of products competing with those of the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:

(i) that the Domain Name is confusingly similar to the Complainant’s name and registered trademarks; and

(ii) that the Respondent has neither conceivable rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant’s assertions in respect of (i) and (ii) are supported, in short, by the obvious similarity between the dominant element in the Domain Name “ghirardelli”, with the mere addition of a suffix being the generic word “chocolates”, the principal products of the Complainant, and by the fact that the Complainant asserts that it has given no permission to the Respondent to register or use the Domain Name and the Respondent is not commonly known by nor has it any other rights in the name “Ghirardelli”. The only apparent purpose and use of the Domain Name is to redirect Internet users to suppliers of various products and services. The Complainant provides evidence that the Respondent’s websites accessed by the Domain Name used to provide links to suppliers of products competing with those of the Complainant, although this functionality is currently disabled.

In support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact of the Respondent must have registered the Domain Name in circumstances where the Respondent knew full well of the Complainant’s overwhelming legal rights to the mark GHIRARDELLI and has made no subsequent legitimate use of the name.

The Complainant argues that the abusive nature of the registration and use of this domain name should be regarded as self-evident.

B. Respondent

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

 

6. Discussion and Findings

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.

However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond to explain the registration and use of the Domain Name.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.

A. Identical or Confusingly Similar

It is clear that the Complainant is the owner of the GHIRARDELLI trademark.

The mere addition of a generic word after the Complainant’s trademark, and in particular a word identifying a product associated with the Complainant, will not be sufficient to distinguish the disputed domain name if the dominant impression given by the disputed domain name remains the Complainant’s trademark.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark GHIRARDELLI and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant’s name and mark is widely known and is particularly so in the United States of America, in which country the Respondent is located. The Respondent was entitled, and had every opportunity, to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could have done so. The Respondent has given no such explanation.

No effort has been made by the Respondent to use the Domain Name for any purpose which might explain its choice. The Respondent’s use of the Domain Name is simply to attract those who might be interested in the Complainant, for one reason or another, and to direct them to other products and suppliers which, it may be assumed, have pay-per-click arrangements by which the Respondent will derive income.

The Panel, therefore, agrees with the Complainant’s submission that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy directs that the Complainant must establish that the Domain Name has been registered and used in bad faith.

So far as concerns the first limb of this requirement, registration in bad faith, since this is a case in which:

(a) the Respondent registered the Domain Name in circumstances where it must have been aware of the pre-existing rights of the Complainant;

(b) there is virtually no commercial use which could be made of the Domain Name which would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and

(c) if the Respondent had any intention to make some legitimate use of the Domain Name, it has had ample opportunity either to do so or otherwise to explain its conduct, but has done neither

the Panel concludes that the Respondent registered the Domain Name with bad faith, in the sense required by the Policy.

Turning now to the second limb of this requirement, “use in bad faith”:

(a) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its registration as a trademark and use in many countries;

(b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name, and its present use is plainly intended to attract Internet users interested in the Complainant’s product to various other suppliers of other products and services, including in the past confectionery products of suppliers other than the Complainant and its related companies;

(c) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Panel therefore concludes that the Respondent has registered and is using the Domain Name in bad faith.

7. Decision

In the light of the findings in paragraph 6 above, the Panel concludes that:

- the subject domain name <ghirardellichocolates.org> is confusingly similar to the trademark GHIRARDELLI belonging to the Complainant; and

- the Respondent has no rights or legitimate interests in the Domain Name; and

- the Domain Name has been registered and is being used in bad faith.

Accordingly, the Panel orders in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the subject domain name <ghirardellichocolates.org> be transferred to the Complainant.

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William Peter Knight
Sole Panelist

Dated: May 29, 2007