Hershey Chocolate & Confectionery Corporation v. Forsyte Corporation
Claim Number: FA0710001094423
Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen
S. Herbert, of The Ollila Law Group, LLC, 2060
Broadway,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hersheywrapper.com>, registered with Availabledomains.ca Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 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 postmaster@hersheywrapper.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hersheywrapper.com> domain name is confusingly similar to Complainant’s HERSHEY mark.
2. Respondent does not have any rights or legitimate interests in the <hersheywrapper.com> domain name.
3. Respondent registered and used the <hersheywrapper.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hershey Chocolate & Confectionery Corporation, has continuously used the HERSHEY mark since as early 1894, in connection with chocolate and other confectionery items. Complainant holds registrations of the mark in numerous jurisdictions worldwide, including with the Canada Intellectual Property Office (“CIPO”) (Reg. No. 197,943 issued March 8, 1974).
Respondent’s <hersheywrapper.com> domain name was registered on July 9, 2006 and resolves to a links-driven web page, containing various hyper-links that include the word “Hershey” and resolve to third-party websites, some of which offer products or services in competition with those offered under Complainant’s HERSHEY mark. This website also features prominently that it is being offered for sale.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 sufficiently established its rights in the
HERSHEY mark through registration with CIPO pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <hersheywrapper.com> domain name
contains Complainant’s HERSEY mark in its entirety and then includes the
generic term “wrapper,” that describes a part of many of the products offered
under Complainant’s mark. Further,
Respondent’s disputed domain name includes the generic top-level domain
(“gTLD”) “.com.” It is well-established
the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis. Moreover, the inclusion of a
generic term to a trademark, that is closely associated with that mark, will
not distinguish a disputed domain name.
As a result, the Panel finds that Respondent’s <hersheywrapper.com>
domain name is confusingly similar to Complainant’s HERSEY mark pursuant to
Policy ¶ 4(a)(i).
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see
also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd.,
D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with the complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the <hersheywrapper.com>
domain name, but will nonetheless consider all the evidence in light of the
factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see
also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
Nowhere in Respondent’s WHOIS information or elsewhere in
the Record does it indicate that Respondent ever was or is commonly known by
the <hersheywrapper.com> domain name. Further, no evidence suggests that Respondent
has sought or that Complainant has granted permission for use of the HERSHEY
mark in any way. Absent any affirmative
evidence to the contrary, the Panel finds that Respondent is not commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
Respondent is using the <hersheywrapper.com>
domain name to operate a website featuring links to third-party websites, many
of which offer services or products in competition with those offered under
Complainant’s HERSHEY mark. The Panel
infers from Respondent’s use that it is collecting click-through fees for each
Internet user redirected to a competing website. Consequently, the Panel finds this to be
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services).
Respondent’s <hersheywrapper.com> domain name
contains Complainant’s mark in its entirety and resolves to a website that
prominently displays a banner offering the disputed domain name for sale. The Panel finds that Respondent’s willingness
to part with the <hersheywrapper.com> domain name is further
evidence of its lack of rights or legitimate interests in the domain name under
Policy ¶ 4(a)(ii).
See See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that the respondent’s use of the complainant’s entire mark in domain names
makes it difficult to infer a legitimate use); see also Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11,
2000) (finding the respondent’s conduct purporting to sell the domain name
suggests it has no legitimate use).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s confusingly similar <hersheywrapper.com>
domain name resolves to a website that states that it is for sale. The Panel finds this to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”); see also Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum
Respondent’s <hersheywrapper.com> domain name
also resolves to a website displaying links to various third-parties, many of
which offer services or products in competition with those offered under
Complainant’s HERSEHY mark. The Panel
finds this to be additional evidence of Respondent’s bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Moreover, the Panel presumes that Respondent is commercially
benefiting through click-through fees from each Internet user who clicks on one
of Respondent’s links and is redirected to a competitor’s website. This is additional evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hersheywrapper.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 26, 2007
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