Artisian Confections Company
v.
Claim Number: FA0802001142377
PARTIES
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 <sharfenberger.com>, registered with Compana, LLC.
PANEL
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.
PROCEDURAL HISTORY
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 8, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <sharfenberger.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
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 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 postmaster@sharfenberger.com by e-mail.
A timely Response was received and determined to be complete on March 3, 2008.
On March 7, 2008, Complainant timely filed a supplemental submission.
On March 13, 2008, Respondent timely filed a supplemental submission.
All submissions were considered by the Panel.
On March 6, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant operates a first-tier specialty chocolate production
facility. As early as August 1997,
Complainant’s processor in interest began manufacturing and selling chocolate
bars and other confectionary items under the Scharffen Berger Chocolate Maker,
and Scharffen Berger, the latter registration having a filing date of December
26, 1996, and a date of first use of August 14, 1997, and a date of first use
in commerce of November 6, 1997.
Respondent’s domain name ,<sharfenberger.com>
is confusingly similar to the Scharffen Berger marks in which Complainant has
rights through continuous and exclusive use of the trademarks in commerce. Complainant owns the domain names,
<scharffenberger.com>, <scharffen-berger.com>,
<scharffenbergertour.com>, <scharffenbergertours.com>,
<scharffenberger.cn>, <scharffenberger.com.cn>, and
<Scharffenberger.net.cn> (collectively the “Scharffen Berger Websites”)
which are nearly identical to the disputed domain name,
<scharenberger.com>.
Respondent has registered the <sharfenberger.com>
domain name which is nearly identical to the Complainant’s well-known Scharffen
Berger marks.
Respondent is using a term nearly identical to Complainant’s trademark
in its domain name to increase traffic to its website and, presumably, to
benefit economically from the increased traffic. The information found at the disputed URL
<shatenberger.com>, essentially a generic portal, implies that Respondent
is related to Complainant or Complainant’s goods or services.
Respondent’s use of Complainant’s well-known Scharffen Berger trademark
to deliberately divert Internet traffic to its own website does not constitute
a bona fide offering of goods and
services pursuant to Policy ¶4(c)(i).
Respondent is not licensed or otherwise authorized by Complainant to use
Complainant’s Scharffen Berger marks or any other mark similar to Complainant’s
Scharffen Berger trademark; nor is Respondent commonly known by the name, <sharfenberger.com>.
There is no conclusive evidence that Respondent is actually or commonly
known by the disputed domain name.
Respondent cannot establish, under ¶ 4(c)(iii) of the Policy, any
rights to and legitimate interests in the disputed domain name and Complainant
submits that it has satisfied Policy ¶ 4(a)(ii).
Respondent registered and is using the domain name
<scarfenberger.com> in bad faith.
Bad faith registration is established when the Complainant’s trademark
is well-known and, as such, is not one that third parties would legitimately
choose when registering a domain name.
Given the widespread recognition of Complainant’s Scharffen Berger
Marks, it can be inferred that Respondent was aware of Complainant’s trademark
when it registered the disputed domain name, and therefore, that Respondent had
notice of Complainant’s rights.
Respondent is intentionally trying to attach Internet consumers to its <sharfenberger.com> URL, which
offers sponsored links (pay-per-click advertising) to the websites of
Complainant’s competitors by deliberately creating a likelihood of confusion
between Respondent’s domain name and Complainant’s Scharffen Berger trademark,
thereby disrupting Complainant’s business.
Respondent has used the <sharfenberger.com>
domain name to intentionally attract users to its website by creating a
likelihood of confusion with Complainant’s Scharffen Berger Marks and by
typo-squatting on Complainant’s
Scharffen Berger websites and using a name that is confusingly similar to the
Scharffen Berger trademark to the commercial detriment of Complainant.
B. Respondent
Respondent does not deny that Complainant possesses two federally
registered trademarks for “Scharffen Berger” and “Scharffen Berger Chocolate
Maker,” respectively. The domain name in
dispute is a separate and distinct surname, Sharfenberger, which lacks both a
“c” and an “f” which are present in Complainant’s marks.
The Complaint provides not one instance of confusion but contains,
instead, the allegation of counsel that the disputed domain name must be
confusingly similar since it must be under this element of the Policy.
Where a party alleges that a domain name is infringing on a trademark
that consists of a given name, the panelists have rejected their claim and
denied transfer.
Complainant makes a very telling admission in the Complaint where it
notes that many of the links provided on the disputed domain name are entirely
unrelated to Complainant.
Respondent offers a legitimate business of targeted advertising
searches that are legal in all corners of the world and are undertaken in
connection with industry leaders Google and Yahoo. Second, the links in question are provided
pursuant to Yahoo or Google’s terms and are triggered by search requests
entered by computer users.
Respondent may fairly use geographic, descriptive or generic terms, and
personal names as a commercial domain name, regardless of whether they are
federally registered.
The principle that the mere ownership of a common term domain should,
in and of itself, establish the owner’s rights and legitimate interest has been
recognized by several ICANN panels.
The disputed domain provides links to parties who pay to be there and
it is those parties with whom any prospective customer does business.
There is no discussion whatsoever in the Complaint that Respondent was
aware of Complainant or Complainant’s trade name at the time the disputed
domain name was registered and Respondent had no knowledge of Complainant at
that time.
A complainant must proffer evidence that demonstrates that respondent
has specifically intended to confuse consumers seeking out complainant. There is no such proof here.
Respondent is the registrant of thousands of domain names, which
consist of electronically registered generic words. Registering such terms to which no other
party can claim exclusive use is a legitimate business and done in good
faith.
C. Additional Submissions
Complainant
In its Complaint, Complainant fully and thoroughly demonstrates that it
has rights in the Scharffen Berger Marks and that the disputed domain name is
confusingly similar to Complainant’s Scharffen Berger marks.
There are several factors to be considered when determining a term is primarily
merely a surname, and one such factor is the rareness of the surname. A search of <whitepages.com> discloses
33 “hits” for people with Scharffenberger as a last name. Since only 33 listings of Scharffenberger
have been found in a nationwide directory, Scharffenberger is clearly also a
rare surname – which means it is not primarily merely a surname and is capable
of trademark status.
As Respondent’s evidence shows, a Google search for “Sharfenberger”
will generate the automatic response, “Did you mean: scharffenberger.” Thus, while “Sharfenberger” may be a surname,
it is more commonly a misspelling of “Scharffenberger” in the context of Internet
searching.
Given the fact that “schafenberger” is a common misspelling of
“Scharffenberger,” it is clear that Respondent’s intention is to capitalize on
the likelihood of such mistakes by Internet users.
Thus, Complainant maintains its contention that there is significant
risk of confusion between Respondent’s domain name and Complainant’s Scharffen
Berger Marks: it is the phonetic
equivalent to Complainant’s Scharffen Berger Marks; it is visually similar to
Complainant’s Scharffen Berger marks; it is a common misspelling of
Complainant’s Scharffen Berger Marks; and, the mere difference of two letters
is insufficient to obviate confusion.
Such similarities can lead to only one conclusion: the disputed domain name is confusingly
similar to the registered trademark Scharffen Berger.
Use of a confusingly similar domain to generate ad revenues through
sponsored links to the complainant’s competitors is not a legitimate or bona fide use. If Respondent were generating sponsored
listings targeted at “Sharfenberger,” for example, “Scharfenberger family tree”
or “Sharfenberger family reunion,” then Respondent’s fair use argument would be
plausible.
The domain name <sharfenberger.com>
is associated with “Chocolate,” “
Bad faith is evident when a trademark is targeted by a domain, and an
inference of targeting may be drawn from the circumstance that the mark is well
known or famous.
Respondent has already admitted to operating the disputed domain name,
which Complainant has shown to be confusingly similar to its Scharffen Berger
Marks, to generate advertising revenues, which is clear evidence of bad faith.
Respondent’s registration of a typo squatted version of Complainant’s
mark is also evidence of bad faith registration and use under Policy ¶
4(a)(iii).
Respondent
Prior to any discussion of the merits, if any, of Complainant’s
Additional Submission, Respondent vigorously objects to such a filing. Under Rule 12 of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”),
it is stated that “In addition to the complaint and the response, the Panel may
request, in its sole discretion, further statements or documents from either of
the Parties.” Under the Forum’s
Supplemental Rules, Rule 7 (“Rule 7”) allows for the filing of such statements
and documents without a request from the Panel.
Respondent believes that Rule 7 is an improper modification of the
Rules.
Complainant engages in misdirection by
arguing that its mark Scharffen Berger is not a surname. Annex C to the Additional Submission shows
that the two founders of Complainant were physician Robert Steinberg and a
former patient John Scharffenberger.
Complainant’s own domain <scharffenberger.com> is
indistinguishable from the surname of its founder.
Complainant now advances the argument that
the individuals named Sharfenberger are just typos of the surname
Scharfenberger. Those individuals and
their families might disagree with Complainant’s attempt to typosquat on their
surname.
Contrary to Complainant’s
characterization, the omission of letters can be an indicator of confusing
similarity but does not automatically lead to that confusion. Respondent denies that any characters were
dropped but rather that the disputed domain name is a separate and distinct
surname.
Complainant essentially states that its fame
should have put Respondent on notice that registering a separate and distinct
surname unrelated to Complainant should not have occurred. As noted above, Complainant’s fame is
nonexistent. As Complainant’s mark is
derived from a surname it is questionable that it is distinctive enough to meet
the standard required under the Policy to have put Respondent on notice in 2005
that it could not register a different surname.
FINDINGS
For the reasons set forth below, the Panel
finds for the Complainant.
DISCUSSION
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 asserts rights
in the SCHARFFEN BERGER mark through its registration of the mark with the
United States Patent and Trademark Office (Reg. No. 2,215,175 issued December
29, 1998). The Panel finds that this
registration sufficiently establishes Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also 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.").
Complainant claims that
Respondent’s <sharfenberger.com> domain name is confusingly
similar to Complainant’s SCHARFFEN BERGER mark, as the disputed domain name
omits the letters “c” and “f” from Complainant’s mark and adds the generic
top-level domain “.com” to the mark. The
Panel finds that these slight alterations to Complainant’s mark do not render
the disputed domain name distinct from the mark. Thus, the Panel concludes that the <sharfenberger.com>
domain name is confusingly similar to Complainant’s SCHARFFEN BERGER mark
under Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder &
While Respondent contends that the <sharfenberger.com> domain name is comprised of a common surname and as
such cannot be found to be identical or confusingly similar to
Complainant’s mark, the Panel finds that such a determination is not necessary
under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See
Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007)
(finding that because the complainant had received a trademark registration for
its VANCE mark, the respondent’s argument that the term was generic failed
under Policy ¶ 4(a)(i)); see also David
Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum
Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is
unprotectable and therefore the overall mark is unprotectable is at odds with
the anti-dissection principle of trademark law.”).
Complainant has proven this element.
Complainant has made a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii), and the burden is shifted to Respondent to show it does have rights
or legitimate interests. See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not
have rights or legitimate interest in the subject domain names, which burden is
light. If Complainant satisfies its
burden, then the burden shifts to Respondent to show that it does have rights
or legitimate interests in the subject domain names.”).
Pursuant to Policy ¶ 4(c)(ii), Complainant asserts that Respondent is
not commonly known by the <sharfenberger.com> domain name, since
there is no evidence in the record, including the WHOIS information, to suggest
that Respondent is known by the disputed domain name. In addition, Complainant asserts that it has
not licensed or otherwise authorized Respondent to use its SCHARFFEN BERGER
mark. The Panel finds that Respondent is
not commonly known by the <sharfenberger.com> domain name and thus
lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Furthermore,
Complainant contends that Respondent’s <sharfenberger.com>
domain name resolves to a website featuring links to third-party websites,
some of which offer chocolate products in direct competition with Complainant’s
chocolate business. Complainant asserts
that Respondent accrues revenue from these links through click-through
fees. The Panel finds that, pursuant to
Policy ¶¶ 4(c)(i) and (iii), such use does not constitute either a bona fide
offering of goods and services, or a legitimate noncommercial or fair use
of the <sharfenberger.com> domain
name. See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); 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).
While Respondent argues it has no control
over the content of the links displayed on the parked website that resolves
from the <sharfenberger.com> domain
name, the Panel holds Respondent is accountable
for the content of these links. See XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum Nov.
7, 2006) (“While Respondent undoubtedly parked the domain names with GoDaddy,
he is responsible for the content he allows GoDaddy to put on his domains. Respondent could have equally well set up his
own ‘parked’ page without any inappropriate content.”). Therefore, the Panel finds the list of links advertising products and services that
compete with Complainant does not constitute a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Netbooks,
Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The
Panel also notes that Respondent is responsible for the content of any website
using the domain name at issue, and cannot pass that responsibility off to its
registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb.
Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has
posted these [competing] links for the website associated with the Domain
Name. However, the Panel finds this is
no excuse and holds Respondent accountable for the content posted to the site
that resolves from the Domain Name.”).
Complainant has proven this element.
As mentioned above, Complainant contends that Respondent’s <sharfenberger.com> domain name
resolves to a parked website featuring links to third-party websites, some of
which offer products in competition with Complainant’s chocolate business. Complainant asserts that Respondent benefits
commercially from these links, and thus is taking advantage of the likelihood
that Internet users will be confused as to Complainant’s affiliation with the
disputed domain name. The Panel considers
these contentions as further evidence that Respondent registered and is using
the <sharfenberger.com> domain
name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also 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 Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is likely
to confuse the user into believing that the complainant is the source of or is
sponsoring the services offered at the site).
Respondent alleges it is not responsible for the
content posted to the <sharfenberger.com>
because the content is posted by Google's Adsense program. However, the
Panel holds Respondent responsible for this content, and thus finds
registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See St.
Farm Mutual Auto. Insr.
Complainant has proven this
element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sharfenberger.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 24, 2008
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