Hershey Chocolate & Confectionery Corporation v. Milk Duds are ?
Claim Number: FA0807001213355
Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen S. Ryan, of The Ollila Law Group, LLC, Colorado, USA. Respondent is Milk Duds are ? (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milkduds.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A Diaz as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2008.
On July 1, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <milkduds.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2008.
On July 23, 2008, an Additional Submission from Complainant was received timely and compliant with the National Arbitration Forum’s Supplemental Rule 7.
On July 29, 2008, an Additional Submission from Respondent was received timely and compliant with the National Arbitration Forum’s Supplemental Rule 7.
On August 5, 2008, Respondent submitted a second Additional Submission to the National Arbitration Forum, which was determined to be deficient. The Panel has not chosen to consider this Additional Submission in its Decision.
On July 27, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the exclusive licensee of the MILK DUDS mark in the United States and in other countries. The MILK DUDS mark is owned by Huhtamaki Finance B.V. (“Huhtamaki”) and is registered in the United States and many other countries. Complainant, its predecessors, and its licensees, including The Hershey Company, have used the MILK DUDS mark extensively and continuously on candies since as early as 1920. Complainant submitted its trademark and a description of the goods and services used in connection with such marks, including printouts from the United States Patent and Trademark Office (“USPTO”) database for the U.S. registrations for MILK DUDS. Complainant’s license with Huhtamaki grants Complainant the legal right to bring suit or take other action in its own name to eliminate any actual or threatened infringement of the MILK DUDS mark.
The domain name, <milkduds.com>, is a domain name based on our clothing product “Milkduds,” which featured clothing using the popular “Jersey cow” theme. The name itself is derived from two words, “milk” (the common product of a cow, specifically, a Jersey Cow) and “duds” (a commonly used term for clothing). At the time of domain registration and product offering, Complainant did not hold a trademark for the term “Milk Duds” for apparel but only for confectionary products. Per Complainant’s filings, the trademark for “Milk Duds” for apparel was only applied for in January 2007 and published in October 2007, although the Complainant has held the confectionary mark for four decades. Again, per Complainant, sales of Milk Duds branded clothing did not commence until 2004, years after they had developed their product. Nor has Complainant presented any Visual Artwork registrations for their confectionary trademark utilizing the “Jersey Cow” pattern despite, as they pointed out, having produced and marketed the candy for many decades. The brand name for their offering was neither in the class of Complainant’s mark, nor visually similar to Complainant’s confectionary product or packaging. The choice of name was specifically intended to play up the theme of their clothing and not to draw on any goodwill of Complainant’s unrelated confectionary mark.
C. Additional Submissions
Complainant maintains that <milkduds.com> is confusingly similar to the famous MILK DUDS trademark and that it has satisfied Policy ¶ 4(a)(i) and that the disputed domain name consists in its entirety of the Milk DUDS mark. Hence, Complainant submits that it has clearly shown that the disputed domain name is confusingly similar to the mark.
Respondent states that Complainant has failed to establish that they held the mark in the class of the proposed product offering, or that they have at any time trademarked artwork of representations of a “Jersey Cow” nature. Respondent reiterates that the products are significantly different, not confusing, and that Complainant’s claims of such are baseless.
Respondent’s second Additional Submission reiterates Respondent’s earlier arguments. In that this Additional Submission was found to be deficient, the Panel has chosen not to consider this Additional Submission in its Decision. The Panel has also chosen not consider either Respondent’s third Additional Submission or Complainant’s second Additional Submission in its Decision.
Complainant asserts rights in its MILK DUDS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,307,327 issued November 27, 1984), as well as other governmental trademark authorities worldwide. The Panel find that Respondent has rights in the mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
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.
Respondent holds that they are tied to the “Jersey Cow” theme, which is not used by Complainant, and that the “landing page” clearly identifies the site as being unrelated to Complainant; the public is not misled as to the origin of the product, or any relation to the Complainant. Respondent has not made any contentions under Policy ¶ 4(a)(i).
Complainant claims that the <milkduds.com> domain name is identical to Complainant’s MILK DUDS mark but for the addition of the generic top-level domain (“gTLD”) “.com” and the deletion of the space in the mark. Previous panels have held consistently that neither of these modifications are relevant to Policy ¶ 4(a)(i). Therefore, the Panel finds that the <milkduds.com> domain name is identical to Complainant’s MILK DUDS mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent contends that Complainant’s trademark class is for confectionary foods, while Respondent is in the clothing industry. However, the Panel find that trademark classes are immaterial as to findings of trademark rights under Policy ¶ 4(a)(i). See IJSS Inc. v. O’Brien, FA 1181243 (Nat. Arb. Forum June 11, 2008) (“[I]n order to determine whether a complainant has rights in a mark under Policy ¶ 4(a)(i), it is immaterial for which class the registration was granted, or in the case of common law marks, in which business sector the mark was used.”).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts 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 UDRP ¶ 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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant asserts that the WHOIS information lists the registrant as “Milk Duds are?” and that the e-mail associated with the disputed domain name is inoperable. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also 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).
Complainant argues that Respondent’s disputed domain name resolved to various websites, ranging from “under construction” web pages to web pages purporting to offer “cow clothing” at some future point. Complainant asserts that Respondent has made no real active use in the 10 years that Respondent has owned the disputed domain name. The Panel finds that Respondent has not made 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 L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that “in certain instances excusable delays will inevitably arise,” but noting that “those delays must be quantifiable and limited; they cannot extend indefinitely”); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims).
Complainant asserts that Respondent’s disputed domain name was registered so that Internet traffic would be diverted from Complainant to Respondent’s website. The Panel therefore finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Complainant also alleges that Respondent has created a likelihood of confusion as to Complainant’s source and endorsement of the disputed domain name and corresponding website. The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Complainant also asserts that, given Complainant’s worldwide recognition, Respondent had actual or constructive notice of its rights in its registered trademark. The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <milkduds.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: August 5, 2008
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