Artisian Confections Company v. Domain Administration Limited
Claim Number: FA0802001142376
Complainant is Artisian Confections Company (“Complainant”), represented by Kathleen
S. Ryan, of The Ollila Law Group LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scharfenberger.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2008.
On February 5, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <scharfenberger.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
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 <scharfenberger.com> domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark.
2. Respondent does not have any rights or legitimate interests in the <scharfenberger.com> domain name.
3. Respondent registered and used the <scharfenberger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Artisan Confections Company, is a wholly-owned subsidiary of The Hershey Company and a successor-in-interest to Scharffen Berger Chocolate Maker, Inc. Complainant and its predecessor-in-interest have been manufacturing and selling chocolate bars and other confectionary products under the SCHARFFEN BERGER mark since 1997. Complainant’s mark has become well-known as identifying premium chocolate goods. Along with several domain names incorporating the SCHARFFEN BERGER mark, Complainant owns a trademark registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,215,175 issued December 29, 1998).
Respondent registered the <scharfenberger.com> domain name on April 22, 2003. The disputed domain name currently resolves to a website featuring links to third-party websites offering various chocolate and candy products in direct competition with Complainant.
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 asserts rights in the SCHARFFEN BERGER mark by
virtue of its registration of the mark with the USPTO. Pursuant to Policy ¶ 4(a)(i), the Panel finds
that this registration sufficiently establishes Complainant’s rights in the
mark. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant next asserts that Respondent’s <scharfenberger.com> domain name is confusingly similar to its SCHARFFEN BERGER mark, as it merely omits one letter “f” from the mark and adds the generic top-level domain “.com” to the mark. Previous panels have found, and this Panel so finds, that the omission of a letter from a mark does not render a disputed domain name distinct from that mark, and the addition of a top-level domain is irrelevant under the UDRP. Therefore, the Panel concludes that the <scharfenberger.com> domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel thus finds Policy ¶ 4(a)(i) has been satisfied.
After Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the <scharfenberger.com> domain name, the burden then shifts to Respondent to refute that showing. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. 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).
Respondent’s failure to answer the Complaint in this proceeding raises the presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent’s <scharfenberger.com> domain name resolves to a website featuring links to third-party websites in direct competition with Complainant’s chocolate and candy business, and that Respondent earns click-through fees when Internet users click on these links. The Panel accepts this contention, and finds that Respondent is not using the <scharfenberger.com> domain name in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Furthermore, there is no evidence in the record, including the WHOIS information, to suggest that Respondent is commonly known by the <scharfenberger.com> domain name, and Complainant has not given Respondent permission to use its SCHARFFEN BERGER mark for any purpose. The Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel thus finds Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant alleges that Respondent registered and is using the <scharfenberger.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). As Respondent is using the disputed domain name to display links to third-party websites that compete with Complainant, the Panel finds a disruption of Complainant’s business. This qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
In addition, the Panel finds that Respondent commercially benefits from the links displayed on the website that resolves from the <scharfenberger.com> domain name, which is confusingly similar to Complainant’s SCHARFFEN BERGER mark. Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain name. This is further evidence of Respondent’s bad faith registration and use 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 thus finds 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 <scharfenberger.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 24, 2008
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