National Arbitration Forum




Jelly Belly Candy Company v. S.K. Industries Pvt. Ltd. c/o S. K. Jain

Claim Number: FA0709001082263



Complainant is Jelly Belly Candy Company (“Complainant”), represented by Nicholas S. Gold, of Law Offices of James R. Cypher, 405 14th Street, Suite 1067, Oakland, CA 94612-2777.  Respondent is S.K. Industries Pvt. Ltd. c/o S. K. Jain (“Respondent”), represented by Kapil Kher, of Anil K. Kher and Company, F-256 New Rajinder Nagar, New Delhi - 110060, India.




The domain name at issue is <>, registered with Directi Internet Solutions d/b/a



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.


Dennis A. Foster as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 28, 2007.  In response to a notification by the National Arbitration Forum that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 5, 2007.


On October 1, 2007, Directi Internet Solutions d/b/a confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Directi Internet Solutions d/b/a and that the Respondent is the current registrant of the name. Directi Internet Solutions d/b/a has verified that Respondent is bound by the Directi Internet Solutions d/b/a 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”) and Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).


On October 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 2007 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 by e-mail.


A Response was received and determined to be complete on November 1, 2007.


A Supplemental Complaint, on November 5, 2007, and Supplemental Response, on November 10, 2007, were received by the National Arbitration Forum.  As the Panel has determined that both the Supplemental Complaint and Response complied with the requirements of the National Arbitration Forum’s Supplemental Rule 7, the Panel has considered them in connection with the decision rendered below.


On November 5, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.



Complainant requests that the domain name at issue be transferred from Respondent to Complainant.



A. Complainant


- Complainant owns the registered trademark JELLY BELLY (United States Registration No. 1,132,333, April 1, 1980; Registration No. 1,203,786, August 3, 1982; etc.), for use in its production and sale of candy.  Respondent registered the disputed domain name on June 14, 2001, many years after Complainant had established its mark in commerce.


- The disputed domain name includes Complainant’s full trademark, and Respondent is using the name to offer candy for sale to the public who will assume that the name hosts the Indian website for Complainant’s products.


- Respondent has no rights or legitimate interests in the disputed domain name as:  Respondent is using the name in connection with a mala fide offering of goods; is not commonly known by that name in the United States; and is making an illegitimate commercial use of the name to misleadingly divert consumers and tarnish Complainant’s trademark.  Also, Respondent may not validly claim rights in India to Complainant’s famous trademark.


- Respondent registered and is using the disputed domain name in bad faith because Respondent is intentionally attempting to attract, for commercial gain, internet users to Respondent’s website by creating the likelihood of confusion with Complainant’s mark.


- Further evidence of Respondent’s bad faith may be inferred from its attempt to hide both its identity and location.


B. Respondent


- Founded in 1956, Respondent has been manufacturing and selling edible products, including sweets, jams and fruit jellies, across India since 1991.


- Respondent first introduced Fruit Jelly and Jel products to the Indian market in 1995, using the brand name, MAHAK JELLY BELLY.  Respondent registered the mark in India on June 12, 1996.


- Respondent has used the disputed domain name, <>, since 2001 for the bona fide purpose of promoting the sale of its Jelly and Jel products under the trademark, MAHAK JELLY BELLY, whose sales have risen from Rs.66.08 million in 2000-01 to Rs.132.77 million in 2006-07.  The sales make the Respondent the market leader for such products in India (some sales occurring also in a few neighboring countries), and with no objections prior to this Complaint have arisen.  


- Respondent’s use of the disputed domain name is in good faith as the Respondent is an entrepreneur not a cyber-squatter.  Respondent had no previous knowledge of Complainant and had no intent to profit through confusion with its trademark.


- “Jelly” is descriptive of Respondent’s jelly and jel products, and “belly” – meaning stomach – refers to the edibility of those products.  Respondent has every right to use those words in a domain name, and the two parties’ marks are stylistically different.


- Complainant does not market its products in India, though it illegitimately registered the trademark, JELLY BELLY, in India for the sale of candy in 1998.  Complainant may be famous in the United States but is unknown in India; whereas Respondent is famous in India but may be unknown in the United States.


- Respondent hired an agent to register the disputed domain name and design and manage a website for it, which explains any confusion as to ownership of the name.


- Complainant is guilty of reverse domain name hijacking.  There are many other domain names owned by third parties that contain the words “jelly” and “belly,” and Complainant delayed for several years from registration of the disputed domain name before this filing, both circumstances that evidence bad faith.  Moreover, Complainant has been aware of Respondent’s operations in India since at least 1998.


C. Complainant’s Supplemental Contentions


- Complainant only learned of the disputed domain name on September 12, 2006.


- Respondent’s assertion that the words “jelly belly” are descriptive and generic is an admission that Respondent has no rights or legitimate interests that support its registration of the disputed domain name.


- Respondent may have rights and legitimate interests in the mark MAHAK that would justify its registration of a domain name incorporating “Mahak” with another word and a gTLD.


- Respondent was aware of Complainant and its marks prior to this Complaint.  In 1998, Complainant sent Respondent a cease and desist letter with respect to Respondent’s use of the JELLY BELLY mark on its products and websites.  Respondent replied by stating in a letter, dated May 29, 1998, that it would discontinue shipping any of its products for sale in the United States, thus conceding Complainant’s exclusive rights in its trademark, JELLY BELLY.


- Respondent is wrong when it asserts it obtained a valid Indian trademark registration of the mark, MAHAK JELLY BELLY, on June 12, 1996.  Respondent merely registered a design mark that contained, among other things, the word “MAHAK” and the phrase “Jelly Belly.”

- In October 2003, Complainant filed a Notice of Opposition to Respondent’s attempt to register the mark, MAHAK JELLY BELLY, under Registration No. 93241, with the Indian trademark authorities.  Action on that Notice is still pending.


- Use of Chinese characters on one of its Indian trademark registrations presents strong evidence that Respondent has made sales in a Chinese-speaking country.


- Complainant cannot be guilty of reverse domain name hijacking because Respondent has no rights of legitimate interests in the disputed domain name and Complainant has not brought the Complaint in bad faith.


D. Respondent’s Supplemental Contentions


- Complainant did not discover the disputed domain name on September 16, 2006.


- Respondent has not admitted that it lacked rights or legitimate interests in the disputed domain name.


- Respondent never attempted to sell its wares in the United States; a distributor of Respondent may have made such an attempt on its own behalf.  Moreover, Respondent’s May 20, 1998 letter clearly affirmed its bona fide business in marketing fruit jellies in India and its application in 1996 for an Indian trademark for its JELLY BELLY mark.  The addressee accepted those assertions as set forth in the letter and the matter was settled.  In any event, the correspondence was between Respondent and a third party, Herman Goelitz Candy Co. Inc., not Complainant.


- Again, Herman Goelitz Candy Co. Inc., not Complainant, allegedly filed the Notice of Opposition to Respondent’s Indian grant of registration to the trademark, MAHAK JELLY BELLY, of which Notice Respondent has come to know only through this proceeding.


- Complainant admits to knowing of Respondent’s use of the MAHAK JELLY BELLY mark to vend fruit jellies in India since 1998, but has never filed an action against that use until the instant filing, evidence of Complainant’s bad faith in bringing this Complaint.


- Respondent denies selling its products in the Chinese market.



The Response was not filed within the deadline as required by paragraph 5(a) of the Rules.  However, it is within the discretion accorded the Panel pursuant to paragraph 10 of the Rules to consider the Response so as to grant Respondent “a fair opportunity to present its case.”  See Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., D2005-0603 (WIPO October 6, 2005) (“However, under paragraph 10(b) of the Rules, the Panel must ensure that the parties are treated with fairness and equality, and the Panel has the power, under paragraph 10(c) and (d) of the Rules, to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence filed.”).  Because the Response arrived only a few days after the deadline expired but before the start of the decision-making phase of this proceeding and because Complainant, by filing a Supplemental Complaint, clearly recognized the Response, the Panel has considered the Response in rendering its decision as set forth below.  See Candid Color Sys., Inc. v. Vertical Axis, Inc, FA 702669 (Nat. Arb. Forum June 27, 2006); and J.P. Morgan & Co., Inc. & Morgan Guaranty Trust Co. of New York v. Resource Mktg., D2000-0035 (WIPO March 23, 2000).



Complainant is a United States of America company that produces and sells candy under its trademark JELLY BELLY.  Complainant has been in business since 1976 and has many United States registrations for its mark (e.g. Registration No. 1,132,333, April 1, 1980; and Registration No. 1,203,786, August 3, 1982).


Respondent registered the disputed domain name, <>, on June 14, 2001.  Respondent, a company doing business primarily in India, produces and markets fruit jellies under the brand name MAHAK JELLY BELLY.


In 1998, Complainant and Respondent exchanged correspondence concerning Respondent’s use of the mark JELLY BELLY in connection with the sale of fruit jellies in the United States as well as India.  Complainant objected to Respondent’s use of that mark in 1998, and filed a Notice of Opposition with the Indian Trade Marks Registry with respect to Respondent’s trademark application for the mark MAHAK JELLY BELLY in 2003.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”


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;

(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 has supplied the Panel with more than sufficient evidence to establish multiple, valid United States registrations of Complainant’s trademark JELLY BELLY.  Therefore, in accordance with many prior UDRP decisions, the Panel concludes that Complainant has the necessary rights in that mark to satisfy the requirements of Policy Paragraph 4(a)(i).  For example, see Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004); and Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum November 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).


The disputed domain name, <>, is not identical to Complainant’s mark because, along with the .gTLD “.com,” the geographical term “India” is added.  Yet this addition might serve only to transform identity to confusing similarity in comparing the disputed domain name with Complainant’s trademark – especially since the addition occupies the posterior position in the name – as Internet users might reasonably believe that the name relates to Complainant’s products to be found in the country of India.  Several previous Policy panels have discounted the addition of country names in finding confusing similarity between trademarks and domain names.  See PepsiCo, Inc. v. QWO, D2004-0865 (WIPO December 13, 2004) (“…forming a domain name, such as the disputed domain name here, by appending a country name [here Afghanistan] to a complainant’s mark [here being “PEPSICO”] is completely insufficient to dispel user confusion from inevitably occurring.”); and Honda Motor Co. Ltd. v. LOKITA Enters., D2003-0507 (WIPO August 8, 2003) (where the Panel, in ordering transfer of the disputed domain name, <>, found it confusingly similar to the trademark, HONDA).  The Panel finds itself in agreement with such precedent and determines that the disputed domain name is confusingly similar to Complainant’s valid trademark.


In view of the above, the Panel rules that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.


Rights or Legitimate Interests

The Policy, in paragraph 4(c), lists three ways in which Respondent may establish its rights or legitimate interests in the disputed domain name as follows:


(i) before any notice to you [Respondent] of the dispute, your [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 or services; or


(ii) you [Respondent] (as an individual, business, or other organization) have [has] been commonly known by the domain name, even if you have [Respondent has] acquired no trademark or service mark rights; or


(iii) you are [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.


In this case, Respondent could arguably claim that paragraph 4(c)(ii) applies in its favor since, as even Complainant concedes, Respondent has sold products for at least nine years in India under the brand name MAHAK JELLY BELLY, which contains the core of the disputed domain name <>.  However, Respondent’s best and, the Panel believes, successful argument stems from application of paragraph 4(c)(i) above.


Respondent has furnished the Panel with compelling evidence – confirmed by Complainant’s presentation of its 1998 correspondence with Respondent – that it has been in the business of marketing fruit jelly products in India for at least nine years.  Since 2001, Respondent has employed the disputed domain name in this endeavor, thus using it “in connection with a bona fide offering of goods.”  Certainly, the offerings under that name are bona fide, since the word “jelly” seems to apply exactly to the products being sold by Respondent, and the word “belly” – meaning stomach – only emphasizes the edibility of those products; and certainly the disputed domain name was involved in Respondent’s offerings long before this dispute arose. 


Complainant contends that Respondent’s offerings are not bona fide because Respondent’s MAHAK JELLY BELLY mark in India infringes upon Complainant’s validly registered trademarks.  However, Complainant has presented neither evidence that it markets its products in India, or even in countries neighboring India, nor evidence that Respondent’s sales have interfered with Complainant’s business.  Correspondingly, while Complainant’s trademark may enjoy relative renown in the United States and other countries where it does operate, Complainant has failed to establish evidentially that its mark is well-known (or even known) in India.  But most importantly, the reconciliation of competing trademark claims is beyond the Panel’s purview in this proceeding.  The Panel must confine itself strictly to determinations on the issues placed before it under the Policy, not engage in the adjudication of relatively complex issues of trademark violations as those might be evaluated under Indian or international law.


In support of its contentions, Complainant also cites the prior UDRP case, Cable News Network LP, LLP v. Khouri, FA 117876 (Nat. Arb. Forum Dec.16, 2002), where the panel ordered the transfer of hundreds of disputed domain names containing “cnn” plus a country name or abbreviation.  However, the Panel does not find that decision applicable to the facts at issue in this case.  In Cable News supra, and unlike in the case at hand, the respondent had not started its operations before registration of the disputed domain names, he had lived in the complainant’s domicile country for fifteen years prior to registration of the names, and the sheer volume of the names registered demonstrated that the respondent was not targeting a specific country market outside of the complainant’s sphere of sales.  Furthermore, the Panel finds that the trademark CNN is at least an order of magnitude more recognizable globally than is Complainant’s mark JELLY BELLY. 


Accordingly, the Panel finds that Complainant has failed to sustain its burden to prove that Respondent has no rights or legitimate interests in the disputed domain name.  


Registration and Use in Bad Faith

As Complainant has failed to carry its burden with respect to the preceding and necessary element under consideration in this proceeding, the Panel will not considered whether the disputed domain name was registered and is being used in bad faith.


Reverse Domain Name Hijacking

Respondent has asked the Panel to consider whether Complainant’s actions in this case constitute reverse domain name hijacking.  As the Panel determined that Complainant does have a relatively strong pre-existing trademark to which the disputed domain name is confusingly similar, and Complainant may have a valid trademark infringement claim with respect to Respondent’s operations, the Panel cannot conclusively determine that Complainant acted in bad faith in initiating this filing under the Policy.  As a result, the Panel declines to find Complainant guilty of reverse domain name hijacking.  See Nat’l Trust for Historic Preservation v. Preston, D2005-0424 (WIPO Aug. 10, 2005) (“Inasmuch as the Panel has found that the Complainant has incontestable rights in its HISTORIC HOTELS OF AMERICA mark, and that the disputed domain name is confusingly similar to that mark, the Panel finds the Respondent’s claim of reverse domain name hijacking unpersuasive.”); and also Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005). 




Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.






Dennis A. Foster, Panelist
Dated: November 19, 2007



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