MGW Group, Inc. v.Vivian Kavroudakis dba Staci's Cookie Bouquet
Claim Number: FA0112000102861
Complainant is MGW Group, Inc., Plano, TX (“Complainant”) represented by Pamela Ratliff, of Baker Botts LLP. Respondent is Vivian Kavroudakis dba Staci's Cookie Bouquet, Hartford, CT (“Respondent”) represented by Martin Clayman, of Clayman, Markowitz, Tapper & Baram LLC.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staciscookiebouquet.com>, registered with Tucows, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 13, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.
On December 13, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <staciscookiebouquet.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <staciscookiebouquet.com> domain name is confusingly similar to Complainant's COOKIE BOUQUET mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Since 1983, Complainant has used the COOKIE BOUQUET mark in commerce in relation to its specialty cookie gift arrangements, decorated cookies and gourmet cookies. Complainant sells its cookies in shops and over the Internet at <cookiebouquet.com>. Gross sales for the year were approximately $57,000,000. Complainant spends almost two million dollars a year on advertising and public relations.
Complainant's franchise has won several awards for excellence and is consistently rated as one of the nation’s best franchises. Complainant, due to its professionally designed and decorated cookies, was granted a license by Disney to feature its characters on its decorated cookies. Through its extensive advertising and promotion, Complainant has established a large amount of good will and is well-known among consumers and through out the retail cookie business.
ten U.S. Trademark Registrations for its family of
COOKIE BOUQUET marks. Complainant asserts that Due to its extensive advertising and long, continuous use of the family of COOKIE BOUQUET marks, the marks have acquired secondary meaning with the consuming public such that consumers associate the mark with Complainant and its professional cookie products.
Respondent registered the <staciscookiebouquet.com> domain name on February 21, 2001. Complainant's investigation revealed that Respondent operates a retail cookie store in Hartford, Connecticut and also sells cookies over the Internet at the disputed domain name. In July, 2001 Respondent agreed to stop using the disputed domain name. Respondent did not stop but merely changed the heading of the website so that it no longer reads "Staci's Cookie Bouquet".
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant, through continuous and extensive use has established that it has rights in the COOKIES BOUQUET mark. Furthermore, Respondent's <staciscookiebouquet.com> domain name is confusingly similar to Complainant's mark because it incorporates the entirety of Complainant's mark and merely adds the name "stacis" to the beginning. The addition of a name to another's mark does not create a distinct mark capable of overcoming a claim of confusing similarity. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent is using a confusingly similar domain name to provide services that are similar to Complainant's services. It has been found that the use of a confusingly similar domain name to offer similar services is not a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
There is no evidence, and Respondent has not come forward to establish that it is commonly known by the disputed domain name. Because Respondent has not come forward to present evidence that it is commonly known by <staciscookiesbouquet.com> the Panel cannot find that Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
It can be inferred, based on the similarity of the disputed domain name and Complainant's COOKIE BOUQUET mark, that Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making a legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <staciscookiebouquet.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <staciscookiebouquet.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's COOKIE BOUQUET marks in the cookie industry, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <staciscookiebouquet.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <staciscookiebouquet.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 4, 2002
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