Sprinkles Cupcakes Inc. v.
Claim Number: FA0805001189571
Complainant is Sprinkles Cupcakes Inc. (“Complainant”), represented by John
L. Slafsky, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sprinklecupcakes.com>, registered with Intercosmos Media Group.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2008.
On May 8, 2008, Intercosmos Media Group confirmed by e-mail to the National Arbitration Forum that the <sprinklecupcakes.com> domain name is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 May
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 29, 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@sprinklecupcakes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a
Complainant registered the SPRINKLES CUPCAKES trademark and service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No 3,250,609 issued June 12, 2007, its application having been filed Aug. 2, 2005).
Complainant also owns and operates a website resolving from the domain name <sprinklescupcakes.com>.
Respondent registered the disputed domain name on October 10, 2005.
Respondent is not known by the SPRINKLES CUPCAKES mark and has not acquired any trademark or service mark rights in that mark.
Complainant has not licensed or otherwise permitted Respondent to use the SPRINKLES CUPCAKES mark or to apply for or use any domain name incorporating the mark.
The <sprinklecupcakes.com> domain name currently resolves to a page
containing third-party links related to marketers of cupcakes and other baked
goods.
Respondent has been a party to
numerous other UDRP proceedings in which disputed domain names were transferred
from Respondent to various complainants.
Respondent’s <sprinklecupcakes.com> domain name is confusingly similar to Complainant’s SPRINKLES CUPCAKES mark.
Respondent does not have any rights to or legitimate interests in the domain name <sprinklecupcakes.com>.
Respondent registered and uses the <sprinklecupcakes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the SPRINKLES CUPCAKES
mark sufficient to satisfy Policy ¶ 4(a)(i) through registration with the
USPTO. See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a
complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE
marks by registering them with the USPTO).
Moreover, Complainant’s rights in the SPRINKLES CUPCAKES mark date back
to when the application was filed with the USPTO, August 2, 2005. Therefore, Complainant’s rights in the mark
pre-date Respondent’s October 10, 2005 registration of the disputed domain name. See Hershey
The disputed domain name differs from Complainants mark by only one letter. Respondent’s removal of the letter “s,” along with the addition of the generic top-level domain “.com” fail to distinguish the <sprinklecupcakes.com> domain name from Complainant’s SPRINKLES CUPCAKE mark. As a result, the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark, but renders the domain name confusingly similar to competing marks); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain for the purpose of determining whether it is identical or confusingly similar to a competing mark).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has neither rights to nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain. Once Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the <sprinklecupcakes.com> domain name, the burden shifts to Respondent to show that it does have such rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that 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 appropriate circumstances, the assertion by a complainant that a respondent has no rights or legitimate interests in a contested domain is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
We are satisfied that Complainant has made out a prima facie case under Policy ¶
4(a)(ii). Respondent, for its part, has
failed to respond to the Complaint. We
are therefore entitled to conclude that Respondent has no rights to or
interests in the disputed domain name cognizable under the Policy. We will nonetheless examine the available
evidence to determine whether there is any basis for concluding that Respondent
has any such rights or interests within the contemplation of Policy ¶ 4(c).
We begin by observing that there is no dispute as to
Complainant’s allegations that Respondent has not acquired any trademark or
service mark rights in the SPRINKLES CUPCAKES mark, that Complainant has not
licensed or otherwise permitted Respondent to use the mark or to apply for or
use any domain name incorporating the mark, and that Respondent is using the <sprinklecupcakes.com>
domain name to advertise third-party links in direct competition with the
business of Complainant. This use of the
contested domain name is, therefore, not 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, for example, Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that a respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the business of a complainant, was not a bona fide offering of goods or services).
We also note that Complainant alleges, and Respondent does not deny, that Respondent is not known by the SPRINKLES CUPCAKES mark. Indeed the pertinent WHOIS information indicates that Respondent is “Belize Domain WHOIS Service Lt.” We therefore conclude that Respondent cannot find shelter in the provisions of Policy ¶ 4(c)(ii) by reason of its common name. See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a disputed domain name under Policy ¶ 4(c)(ii) where that respondent is not known by the competing mark).
The Panel thus finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant is correct in asserting
that Respondent has been a respondent in numerous UDRP proceedings in which
disputed domain names were transferred from it to various complainants. See Brookdale Senior Living, Inc. v.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <sprinklecupcakes.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 11, 2008
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