Artisian Confections Company
Claim Number: FA0802001142377
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.
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 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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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
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).
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.
For the reasons set forth below, the Panel finds for the Complainant.
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). 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.
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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