Artisan Confections Company v. Marketing Total S.A.
Claim Number: FA0801001140581
Complainant is Artisan Confections Company (“Complainant”), represented by Kathleen S. Herbert, of The Ollila Law Group, LLC, Colorado , USA
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <josephschmidtconfection.com>, registered with Domaindoorman, LLC.
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 electronically on
On January 28, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <josephschmidtconfection.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 February 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 2008 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@josephschmidtconfection.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 <josephschmidtconfection.com> domain name is confusingly similar to Complainant’s JOSEPH SCHMIDT CONFECTIONS mark.
2. Respondent does not have any rights or legitimate interests in the <josephschmidtconfection.com> domain name.
3. Respondent registered and used the <josephschmidtconfection.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Artisan Confections Company, is a well-known specialty chocolate business which sells gourmet chocolates around the world. As early as November of 1983, Complainant’s predecessor in interest, Joseph Schmidt Confections, Inc., began manufacturing and selling specialty chocolate goods under the JOSEPH SCHMIDT CONFECTIONS mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its JOSEPH SCHMIDT CONFECTIONS mark (Reg. No. 1,560,050 issued October 10, 1989).
Respondent registered the disputed domain name on
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 registered the JOSEPH SCHMIDT CONFECTIONS mark
with the USPTO, and thus has established rights to the mark pursuant to Policy
¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <josephschmidtconfection.com>
domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that the subtraction of the
letter “s” from Complainant’s mark does not sufficiently distinguish the
disputed domain name from Complainant’s mark.
Further, because all domain names require a top-level domain name,
Respondent’s inclusion of the generic top-level domain (“gTLD”) “.com” does not
distinguish the disputed domain name from Complainant’s JOSEPH SCHMIDT
CONFECTIONS mark. The Panel finds that
the disputed domain name is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i). See Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc.,
202 F.3d 489 (2d Cir. 2000), cert. denied, 530
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <josephschmidtconfection.com> domain name. When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel holds that in this case, Complainant has established a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Due to Respondent’s failure to respond to the Complaint, the
Panel may assume that Respondent does not have rights or legitimate interests
in the disputed domain name. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant asserts that Respondent is neither commonly
known by the <josephschmidtconfection.com>
domain
name, nor licensed to register domain names using the JOSEPH SCHMIDT CONFECTIONS
mark. The Respondent’s WHOIS information
identifies Respondent as “Marketing Total S.A.,” which provides no evidence
proving that Respondent is, or has ever been commonly known by the disputed
domain name. Therefore, pursuant to
Policy ¶ 4(c)(ii), the Panel finds that Respondant is not commonly known by the
disputed domain name. See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Complainant contends that Respondent is using the <josephschmidtconfection.com> domain name in order to
divert Internet users to the associated website in order to advertise third-party
links to competitor’s websites. The
Panel finds that intentionally diverting unknowing Internet users to a
competing website by a domain name which is confusingly similar to a
complainant’s mark is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see
also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum
Nov. 20, 2003) (finding that the respondent used a domain name for commercial
benefit by diverting Internet users to a website that sold goods and services
similar to those offered by the complainant and thus, was not using the name in
connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <josephschmidtconfection.com>
domain name
in order to intentionally attract Internet users to its website by creating a
strong possiblity of confusion with Complainant’s JOSEPH SCHMIDT CONFECTIONS
mark and offering third-party links to competing websites is evidence of bad
faith. The Panel infers that Respondent
receives click-through fees for advertising such third-party websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the
Panel finds such use of the disputed domain name constitutes bad faith
registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and giving
the impression of being affiliated with or sponsored by Complainant, this
circumstance qualifies as bad faith registration and use of the domain name
pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s
use of the <josephschmidtconfection.com>
domain name
to advertise websites in direct competition with Complainant is further
evidence of bad faith. The Panel finds
that a registered domain name used primarily to disrupt the business prospects
of a competitor is an illustration of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <josephschmidtconfection.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 14, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum