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.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jellybellyindia.com>, registered with Directi Internet Solutions d/b/a PublicDomainsRegistry.com.
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 PublicDomainsRegistry.com confirmed by e-mail to the National Arbitration Forum that the <jellybellyindia.com> domain name is registered with Directi Internet Solutions d/b/a PublicDomainsRegistry.com and that the Respondent is the current registrant of the name. Directi Internet Solutions d/b/a PublicDomainsRegistry.com has verified that Respondent is bound by the Directi Internet Solutions d/b/a PublicDomainsRegistry.com 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 email@example.com 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.
- 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
- 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.
- Founded in 1956, Respondent has
been manufacturing and selling edible products, including sweets, jams and
fruit jellies, across
- 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
- Respondent has used the disputed
domain name, <jellybellyindia.com>,
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
- 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
- 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
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
- 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
- Respondent denies selling its products in the Chinese market.
LATE FILING OF RESPONSE
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
registered the disputed domain name, <jellybellyindia.com>,
on June 14, 2001. Respondent, a company
doing business primarily in
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.
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
is not identical to Complainant’s mark because, along with the .gTLD “.com,”
the geographical term “
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.
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 <jellybellyindia.com>. 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
Complainant contends that
Respondent’s offerings are not bona fide
because Respondent’s MAHAK JELLY BELLY mark in
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.
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,
Dated: November 19, 2007
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