National Arbitration Forum

 

DECISION

 

Belgium's Best v. Belgiums Best Chocolates, Inc.

Claim Number: FA0810001228948

 

PARTIES

Complainant is Belgium's Best, represented by Matthew H. Swyers, of The Swyers Law Firm, PLLC, Virginia, USA.  Respondent is Belgiums Best Chocolates, Inc., represented by Thomas Paul Gordon, of Sherin and Lodgen LLP, Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <belgiumsbestchocolates.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Timothy D. O’Leary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2008.

 

On October 13, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <belgiumsbestchocolates.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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 10, 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@belgiumsbestchocolates.com by e-mail.

 

A timely Response was received and determined to be complete on November 10, 2008.

 

An Additional Submission was received from Complainant on November 17, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

 

An Additional Submission was received from Respondent on November 19, 2008.

 

On November 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

I.          COMPLAINANT’S CONTENTIONS

 

            A.        IDENTICAL/OR CONFUSINGLY SIMILAR

 

Complainant was established and began using the mark BELGIUM’S BEST in Belgium in June of 1988 in connection with its chocolate and confectionary products.

 

Its first year sales under the mark were approximately 300,000 euro or today’s equivalent of U.S. $432,000.

 

As its sales and notoriety under the mark BELGIUM’S BEST continued to grow so too did their client base. By 1995 Complainant’s sales had increased to approximately 1,500,000 euro (U.S. $2,157,000). By 1996 sales under the mark grew to over 1,750,000 euro (U.S. $2,517,000) and in 1997 eclipsed the 2,000,000 euro mark (U.S. $2,876,900). Correspondingly, their client base now included the likes of British Airways of Harmondsworth, Great Britain; DHL Express of Plantation, Florida USA; the Microsoft Corporation of Washington, USA; Novell of Waltham, Massachusetts USA; and Mercedes-Benz of Germany.

 

Additionally, as the worldwide demand for its product sold under the name BELGIUM’S BEST continued to grow through the early 1990s Complainant moved to satisfy demand by opening both an office in the United Kingdome in 1995 and in Singapore in 1996.

 

As such, by 1998 Complainant had been using the mark BELGIUM’S BEST in connection with chocolates and confectionaries throughout Europe, in the United States, as well as Asia. Complainant, moreover, retained uncontroverted longstanding use of the mark throughout Europe for ten years by 1998.

 

On or about February 17, 1999 Mr. Van Riet contacted Complainant to become an importer of Complainant’s product into the U.S. A copy of the facsimile sent to Complainant from Respondent listed Mr. Van Riet’s contact information as Nirvana Chocolates making no reference to Belgium’s Best Chocolates, Inc.

 

On June 24, 1999 Complainant registered the domain name <belgiumbest.com> to launch its Internet presence in the sale and distribution of its chocolate and confectionary products. On or about October 19, 2000, Complainant launched its web site promoting its good and services under the mark BELGIUM’S BEST.

 

Complainant, through its related entity, retains three registrations for its mark BELGIUM’S BEST. First Complainant retains International Reg. No. 756,209 for the mark BELGIUM’S BEST and design registered on or about March 26, 2001. Complainant, again through its related entity, retains two U.S. registrations for the mark on the Principal Register of the U.S. Patent and Trademark Office registered on or about January 1, 2008.

 

Of note, Respondent did not post pages to the disputed Domain Name until June 21, 2006.

 

The Respondent’s use of the Domain Name <belgiumsbestchocolates.com> is confusingly similar to Complainant’s marks in that the Domain Name consists of the same or confusingly similar words as Complainant’s mark merely adding the descriptive and/or generic term thereto chocolate.

 

Respondent’s registration and/or use of Complainant’s mark as a domain name creates what the Ninth Circuit has labeled “initial interest confusion.” See Brookfield Comm., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062-63 (9th Cir. 1999).  This occurs when Internet users enter the trademark or service mark as the domain name expecting to arrive at the owner of that trademark or service mark’s website.  When users arrive at the site, they are often confused, even if only momentarily, by the infringer’s website or lack thereof. Thus, when Internet users type in the virtually identical name of Complainant’s service mark “Belgium’s Best” in any number of the available search engines they cannot help but be confused, if only briefly, by Respondent’s misuse of Complainant’s mark as indexed by those search engines.

 

B.        RIGHTS AND LEGITIMATE INTERESTS

 

Since at least June 1, 1988 Complainant has used the mark BELGIUM’S BEST throughout the world and in particular in Belgium, The Netherlands, Luxenburg, Germany, the United Kingdom, Singapore, and the United States to identify its unique products and, in particular, chocolates and confectionaries. After Complainant’s mark had established longstanding use and distinctiveness worldwide, including in the United State, Respondent proceeded to register the Domain Name <belgiumsbestchocolates.com> on September 29, 1998.

 

Respondent acted with malice and in willful disregard of Complainant’s rights in its mark after being informed of Complainant’s use thereof in early September 1998 by Flanders Investments, subsequently registering the disputed Domain Name, and then contacting Complainant to become a U.S. importer of its good all the while fraudulently representing itself as Nirvana Chocolates and not informing Complainant of the registration of either the corporate name or Domain Name at issue.

 

Under such circumstances Respondent cannot claim or show any rights to the <belgiumsbestchocolates.com> domain name that are superior to Complainant’s rights in the mark BELGIUM’S BEST as evidenced by Complainant’s prior use worldwide and use in commerce in the United States. The uncontroverted evidence establishes that Respondent had actual knowledge of Complainant’s use of the mark BELGIUM’S BEST at the time it registered the Domain Name.

 

Respondent registered and is using the Domain Name for the purpose of promoting confusion among users looking for Complainant’s goods and services offered in connection with its marks and to draw attention, by misdirecting traffic to its website, to its goods and services offered in competition with those services provided by Complainant.

 

C.        REGISTRATION AND USE IN BAD FAITH

 

Respondent registered and is using the Domain Name <belgiumsbestchocolates.com> in bad faith. Specifically, Respondent had actual and constructive notice of Complainant’s rights in its trademark at the time it registered the Domain Name. As set forth above, Respondent had actual notice of Belgium Best’s rights in the trademark insofar as Respondent first learned of Complainant’s use of the mark from Flanders Investments in early September 1998. Only thereafter did Respondent register the disputed Domain Name possibly with the intent to become an importer of Complainant’s goods to the U.S.

 

Respondent knew of the existence of Complainant’s mark, registered the Domain Name thereafter through becoming a distributor thereof but then, instead, launched its own competing web site on or about June 21, 2006.

 

Complainant began use of the mark in connection with chocolate and confectionary products early in June 1988 throughout the World and in particular in Belgium, Norway, and Singapore. See ABB Asea Brown Boveri Ltd. v. A.B.B. Transmission Eng’g Co., Lt., D2007-1466 (WIPO Dec. 7, 2007). “Extensive prior use of a name provides constructive knowledge of the Complainant’s trademark rights”.

 

Bad faith is found where a company adopted its mark with the intention of capitalizing on plaintiff’s goodwill and any confusion between his and the senior user’s product.”

 

Respondent capitalizes on Complainant’s goodwill by using Complainant’s registered service mark in conjunction with the term “chocolates” to lure unsuspecting Internet users to its site when the said users are searching for Complainant’s goods and services.  As such, Respondent acted in bad faith in violation of Complainant’s trademark rights when it registered the domain name <belgiumsbestchocolates.com> after Complainant’s longstanding use of its mark and then, years later, posted a site thereto offering for sale competing products.

 

Respondent registered and is using the Domain Name primarily to disrupt the business of Complainant, a competitor of Respondent, by using the Domain Name to redirect Internet traffic to its own web site which offers competing goods and services to those offered by Complainant.

 

Specifically, redirecting Internet traffic to a Respondent’s web page falls within the scope of paragraph 4(b)(iv) of the Policy whereby using a domain name the respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of respondent’s website.

 

Bad faith can be inferred because of the competition between the parties. Both parties offer chocolates and confectionaries to the public. Respondent directs traffic by use of the disputed Domain Name to its own web site located at <belgiumsbestchocolates.com>. As such, customers seeking out Complainant on the Internet through the major search engines are, instead, being diverted to its competition, Respondent. Such acts are prima facie proof of bad faith.

 

Respondent acted in bad faith after registration of the Domain Name because no positive action was undertaken for six years. In essence, Respondent registered the Domain and failed to use the Domain Name for more than half a decade. The Domain Name registered on or about September 29, 1998, however, the website was not launched until, at the earliest, May 18, 2004 and more likely June 21, 2006. Respondent was inactive for six to eight years after registration and three to five years after the launch of Complainant’s website.

 

Respondent deceives Internet users who intend to access Complainant’s site into believing that the goods and services offered by Respondent are in some manner associated, sponsored, or affiliated with those related goods and services offered by the Complainant.  Moreover, to the extent that Internet users realize after being redirected by Domain Name to the website located at <belgiumsbestchocolates.com> that said website is not affiliated with Complainant, injury in the form of initial interest confusion has already occurred.  For these reasons the Domain Name should be transferred to Complainant. 


II.        RESPONDENT’S CONTENTIONS

 

            A.        IDENTICAL/OR CONFUSINGLY SIMILAR

 

Respondent makes no allegations with regard to this policy.

 

            B.        RIGHTS AND LEGITIMATE INTERESTS

 

On July 29, 1998, in full compliance with this Policy, and more than ten years before Complainant brought its Complaint, Respondent incorporated in the United States as a Massachusetts corporation with the corporate name, “Belgium’s Best Chocolates, Inc.” and with a principal place of business in Wellesley, Massachusetts.

 

The familiar association of fine chocolate with Belgian origins also supported Respondent’s choice of name.

 

The incorporation of Belgium’s Best Chocolates, Inc. was for legitimate business purposes and occurred without reference to Complainant’s business. Respondent did not even become aware of Complainant’s existence until months after the incorporation.

 

On September 29, 1998, following its July 29, 1998 incorporation, Respondent registered its Domain Name. Thus, before any notice of the dispute, and for the past several years, Respondent made preparations to use, and used, the Domain Name in connection with a bona fide offering of goods, namely, imported Belgian chocolate.

 

Under Policy Para. 4(c)(ii), rights or legitimate interests in the Domain Name are also established when “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.” With the pre-existing corporate name “Belgium’s Best Chocolate, Inc.,” Respondent has been commonly known by the Domain Name, and has therefore established rights or legitimate interests in the Domain Name.

 

Complainant falsely implies that Respondent registered the Domain Name as a result of a September 1998 communication with Flanders Foreign Investment Office (“FFIO”) representative, whom Complainant does not identify. The representative was Margaretha (Griet) Dehandschutter, FFIO’s Resident Manager in Newton, Massachusetts, and whose office had as its purpose of the promotion of foreign trade with Flanders. As both Respondent’s Christophe Van Riet and Ms. Dehandschutter have confirmed, however, the communication occurred months after Respondent had already incorporated and was operating its business.

 

Complainant’s allegation that Respondent “had actual and constructive notice of the Complainant’s rights in its trademark at the time it registered the Domain Name” is simply false. Respondent had begun doing business and had registered the Domain Name for more than a year before Complainant’s December 21, 1999 application to register the mark “Belgium’s Best” (not “Belgium’s Best Chocolate”) with the U.S. Patent and Trademark Office. Having registered the Domain Name in 1998, over a year before Complainant’s trademark filing occurred, Respondent had no constructive notice of Complainant’s mark. Respondent also had no actual notice of the mark when it incorporated its business before it even knew of Complainant’s existence.

 

Belgium’s Best” is geographically descriptive and laudatory. Courts generally accord little deference to geographic and laudatory marks, which only become enforceable upon proof of acquired “secondary meaning.”

 

Complainant’s mark had not acquired any secondary meaning such that the phrase in question was clearly associated with Complainant or its products in the minds of United States consumers in 1998, when Respondent registered the Domain Name. This conclusion is confirmed in the Patent and Trademark Office limitation of Complainant’s registration of “Belgium’s Best” to the Supplemental Register, because the phrase is descriptive without any secondary meaning.

 

Having registered its Domain Name within two months after incorporation, Respondent in fact has been actively using the Domain Name since 2006, as a site for wholesale customers.

 

            C.        REGISTRATION AND USE IN BAD FAITH

 

Because Respondent has rights or legitimate interests in the Domain Name, the issue of bad faith is moot.

 

Complainant cannot show, for example, that Respondent has “intentionally attempted to attract, for commercial gain, internet users to [the] web site…by creating a likelihood of confusion with the complainant’s mark as to the course, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.”

 

Respondent’s website accurately describes that “[s]ince 1998, we have specialized in importing and distributing the best Belgian Chocolates directly from Belgium to our many customers this side of the Atlantic.”  The website directs itself to “wholesale customer[s], [who] can log on to this site and have access to our Price lists, Sales sheets, Product Images and Seasonal Collections.” Respondent’s business, through the Domain Name website, offers wholesale customers high quality chocolate products, and the website services can only be accessed after the customer logs in.

 

By contrast, Belgium’s Best, at the <belgiumsbest.com> website, caters to corporate, retail clients by delivering “personalized gifts to…companies worldwide to offer to clients and employees at exhibitions, meetings and other specialized events.” Complainant’s “creations are developed by our Design Department on the basis of logos received from the client.”  Personalized produces are delivered, and, according to the website, “Belgium’s Best opts exclusively for direct business to business sale.”

 

Complainant and Respondent are not competitors.  They have been engaged in different businesses with widely divergent customers for ten years before this dispute arose. Because Respondent does not seek the same customers as Complainant, Respondent has no financial incentive to generate confusion with Complainant’s business.  The lack of confusion is revealed in Respondent’s own experience, as attested to by the Van Riet Affidavit, that no customer has ever contacted Respondent for personalized products of the type Complainant sells.

 

Respondent targets customers who are unlikely to do business with Complainant.  Complainant sells products only as their client’s marketing tools, adopting its clients’ logos for the product and not otherwise selling its “brand.”  This is in marked contrast with Respondent’s business.

 

The type of chocolate sold (brand chocolate as opposed to promotional chocolate) are not similar; the channels of trade are not equivalent; the websites are not similar; and the classes or prospective purchasers (wholesale as opposed to retail customers) are not similar.

 

Complainant and Respondent have co-existed for ten years before Complainant brought these proceedings. Complainant and/or its predecessor-in-interest has had direct knowledge of Respondent by virtue of mutual suppliers of chocolate.  In February, 1999, Mr. Van Riet wrote to Complainant, introducing himself and his company.  The reference to Nirvana chocolates on the letter attached as Exhibit 8 to the Complaint was not, as Complainant alleges, “fraudulent,” but reflected the identity of Respondent’s principal brand of chocolate.  Mr. Van Riet and the principal of Complainant, Guy Desseaux, also spoke at the time of the letter and discussed Respondent’s Internet-based retail sales of Belgian chocolates.

 

With regard to Respondent’s Domain Name or otherwise, Complainant made no complaint and took no action, while in the ensuing years Respondent has substantially invested in and built-up its corporate name and wholesale business through the website conducted at the Domain Name.

 

Nirvana is, and has been, Respondent’s principal, but not exclusive, brand of chocolate since Respondent’s incorporation. Respondent has been granted numerous trademark registrations for the NIRVANA mark in connection with its goods. Respondent also markets its “Nirvana” brand products directly to consumers through the Internet on its retail website, <nirvanachocolates.com>, which accurately states that “Nirvana Chocolates is a trademark of Belgium’s Best Chocolates, Inc.”

 

Complainant has known for years that Respondent’s corporate identity was “Belgium’s Best Chocolates, Inc.,” including because Respondent and Complainant have had mutual chocolate suppliers who made both companies aware of each other’s existence. Their mutual existence did not conflict, and to this date has not conflicted, with the independent conduct of their respective businesses in any way.

 

At the Domain Name website, Respondent provides information for wholesale customers who are seeking such branded products for resale to the public, and who must log in to the site to receive Respondent’s pricing information. Respondent’s Domain Name wholesale website caters solely to the wholesale market. Unlike Complainant, Respondent does not use its Domain Name website for the business of packaging its products in its clients’ trademarks and logos.

 

Complainant’s chocolate sales focus on private label sales to corporate customers where its products are packaged with the buyers’ own trademarks. The point of private labels is for Complainant’s trademark to effectively disappear from the packaging as much as possible to avoid conflict with the buyer’s private label. Indeed. Complainant’s website exhorts, “Belgium’s Best® THE specialist in personalized chocolate gifts” “YOUR product. YOUR logo in Belgian chocolate.”  Given that Respondent does not sell private label products, a customer of Complainant is not likely to have any confusion between Respondent and Complainant as to the source of private label products. Indeed, a customer who is not a wholesaler registered with Respondent cannot access Respondent’s Domain Name website or purchase products.

 

Respondent and Complainant are in two different businesses and employ dissimilar marketing strategies, rendering customer confusion between the companies unlikely. Respondent’s corporate gifts business differs fundamentally from Complainant’s private label business. As with Complainant’s customers, Respondent’s wholesale customers (who known Respondent as “Belgium’s Best Chocolates, Inc.”) are sophisticated corporate entities, and courts have recognized that corporations exercise a high degree of caution in their purchasers, which diminishes the chance of any confusion.

 

A year after Respondent registered the Domain Name exactly matching (without the “[i]nc.”) its identity as a Massachusetts corporation, on or about June 24, 1999, Complainant registered its domain name, <belgiumsbest.com>, thereby matching Complainant’s identity as a Belgian corporation. Respondent therefore did not register the Domain Name in a pattern of conduct to prevent Complainant from reflecting its own mark in its domain name, within the meaning of Policy, para. 4(b)(ii).

 

Respondent and its predecessor have been operating a legitimate business under the name GTA for several years prior to receiving notice of the dispute. Respondent’s GTA logo includes the date 1995 and there is evidence of use of that logo in 1997, prior to the filing in Turkey of Complainant’s application to register its GTA logo mark and prior to the filing of any of Complainant’s applications to register the mark in other countries.

 

Complainant has presented no evidence, for none exists, that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of documented out-of-picket costs directly related to the domain name. To the contrary, the Domain Name is the same as Respondent’s corporate name (without the “Inc.”), and Respondent has actively conducted business under its corporate name for more than ten years, having used the Domain Name as its active wholesale website since at least 2006.

 

III.       COMPLAINANT’S ADDITIONAL SUBMISSION

 

Complainant was established and began using the mark BELGIUM’S BEST in Belgium in June of 1988 in connection with its chocolate and confectionary products.

 

By 1992 the geographic scope of Complainant’s business and sales under the BELGIUM’S BEST mark increased from Europe and into Massachusetts, Michigan, New Jersey, and California in the United States.

 

By 1996 and 1997 the geographic scope of Complainant’s business and sales under the BELGIUM’S BEST mark increased further to include sales and distribution in Great Britain, Germany, and the states of Washington and Florida in the United States.

 

By 1998 Complainant had been using the mark BELGIUM’S BEST in connection with chocolates and confectionaries throughout Europe, in the United States, as well as Asia. In regard to Europe, by 1998 Complainant retained uncontroverted longstanding use of the mark for more than a decade. In regard to the United States, by 1998 Complainant retained uncontroverted longstanding use of the mark for more than six years.

 

Respondent was organized under the corporate name Belgium’s Best Chocolates, Inc. in the Commonwealth of Massachusetts on July 29, 1998.

 

On September 29, 1998 Respondent registered the disputed domain name <belgiumsbestchocolates.com>. Complainant contends that said registration occurred after Respondent was made ware of Complainant through Flanders Foreign Investment Office (hereinafter “FFIO”).

 

Respondent admitted that in February of 1999 it wrote to Complainant on Nirvana Chocolate’s letterhead, Respondent’s principal brand of chocolates. pp. 7-8 at π(xvi). Respondent made no reference to the fact that its corporate name was Belgium’s Best Chocolates, Inc. Id.

 

From 1998 until 2006 there is no evidence that Respondent used the corporate name Belgium’s Best Chocolates, Inc. to identify its services or goods aside from a corporate name existing solely on the Secretary of the Commonwealth’s corporate registry. To the contrary, the evidence retained indicates that Respondent did business under the d/b/a Nirvana Chocolates within reference to the corporate identity whatsoever.

 

Respondent contends that its incorporation under the name Belgium’s Best Chocolates, Inc. in 1998 constitutes sufficient “legitimate use” to defeat the instant proceeding. However, proof of mere registration of a company name, without more, is not sufficient to demonstrate that a respondent was commonly known by a subsequently registered domain name.

 

The only evidence of record concerning Respondent’s actual use of the terms Belgium’s Best Chocolates, Inc. in 1998 is in the incorporation documents themselves. Moreover, even when dealing directly with Complainant in 1999, Respondent admits that it did not represent itself as Belgium’s Best Chocolates, Inc. but rather as Nirvana Chocolates.

 

Respondent’s allegations of legitimate use are insufficient to satisfy the requirements of Paragraph 4(c)(ii) of the Policy.

 

As stated above, on September 29, 1998 Respondent registered the disputed domain name <belgiumsbestchocolates.com>. Complainant contends that said registration occurred after Respondent was made aware of Complainant through FFIO. Respondent does not deny this allegation.  Rather, Respondent merely contends that the communication with FFIO occurred months after it “already incorporated” making no reference to when in time the communication occurred vis-à-vis the domain name registration at issue.

 

Respondent admits that the Domain Name at issue was not used until 2006.

 

Respondent had actual notice of Belgium Best’s rights in the trademark insofar as Respondent first learned of Complainant’s use of the mark from FFIO in early September 1998. Only thereafter did Respondent register the disputed Domain Name possibly with the intent to become an importer of Complainant’s good to the U.S.

 

Respondent’s registration in September of 1998 but lack of use until 2006 of the domain name at issue still constituted bad faith under the Policy. Bad faith is established where there is “inaction” on a domain name.

 

Respondent acted in bad faith after registration of the domain name because no positive action was undertaken for six years.  In essence, Respondent registered the Domain in September of 1998, had actual notice of Complainant by no later than February of 1999, but then failed to use the Domain Name until 2006.

 

Respondent seeks to rely upon Complainant’s alleged delay in enforcing its rights as a further defense to this matter.

 

However, where there is no such delay, as in the instant case, such defense is clearly not applicable. The uncontested facts show that (1) Respondent was organized under the corporate name Belgium’s Best Chocolates, Inc. in the Commonwealth of Massachusetts on July 29, 1998; (2) there is no evidence suggesting that Respondent ever held itself out as this entity but evidence exists establishing that even to Complainant respondent held itself out as Nirvana Chocolates; and (3) Respondent registered the disputed domain name on September 29, 1998 but did not use the same until 2006.

 

The true date of “co-existence” only began when Respondent posted its first pages to the disputed domain name in 2006.

 

After learning of the posting of the web site upon the same beginning to appear in search engines on or about March 30, 2007 Complainant, by counsel, submitted its initial cease-and-desist correspondence to Respondent. Improperly addressed, this initial correspondence was returned.  Complainant subsequently sent a second letter to another address listed for Respondent on April 23, 2007.  This letter was received and, in reply, counsel for Complainant received an acknowledgment from counsel for Respondent on or about May 11, 2007.

 

As such, as opposed to the decade of mutual co-existence contended in Respondent’s Response, Complainant, as evidenced herein, lodged its first objection to Respondent’s use within 9 months of the posting of pages to the disputed web site and immediately upon discovery of the existence thereof.

 

Accordingly, the alleged delay was non-existent.

 

Respondent and Complainant are in two different businesses and employ dissimilar marketing strategies.  Despite these unsubstantiated allegations, the marketing strategies are sufficiently linked to have Complainant’s and Respondent’s web sites listed next to one another as the top two results in the two largest search engines in the world.

 

Although Respondent may maintain that marketing channels and distinctions in the parties’ confections are significant, they are not sufficient enough to avoid actual confusion as between the actual consumers of the products.

 

Respondent attempts to argue that the term BELGIUM’S BEST lacks distinctiveness and, therefore, cannot be used to justify the instant Complaint.

 

In regard to the United States, by 1998 Complainant retained uncontroverted longstanding use of the mark for more than six years.  As such, by July 29, 1998 when Respondent was organized under the corporate name Belgium’s Best Chocolates, Inc. in the Commonwealth of Massachusetts, Complainant had already been using its mark in commerce internationally for over a decade and within the United States for more than six years.

 

More than five years prior to use of the disputed domain name Complainant received an international registration for the mark BELGIUM’S BEST and design.  Moreover, Complainant is the owner of two federally registered U.S. trademarks both for BELGIUM’S BEST which exist on the United States Patent and Trademark Office’s Principal Register under Section 2(f) for acquired distinctiveness based upon first use of the marks in interstate commerce as early as 1997 or nine years prior to the posting of web pages to the domain name at issue.

 

Even if Complainant’s marks are viewed as geographically descriptive they have acquired distinctiveness sufficient to form the basis for the instant Complaint and did so well before Respondent’s admitted first use of the domain name as issue.

 

IV.       RESPONDENT’S ADDITIONAL SUBMISSION

 

Complainant’s allegation that “from 1998 until 2006 there is no evidence that Respondent used the corporate name Belgium’s Best Chocolates, Inc. to identify its services or goods aside from a corporate name existing solely on the Secretary of the Commonwealth’s corporate registry” is demonstrably false. Complainant also falsely contends that before its registration of the Domain Name, Respondent had demonstrated “mere registration of a corporation having the same name as the domain name.”

 

These contentions are false because in addition to Respondent’s incorporation on July 29, 1998, multiple sources of evidence prove that Respondent legitimately operated its business, and made itself known as, Belgium’s Best Chocolates, Inc., from the date of incorporation and before the September 29, 1998 Domain Name registration, to the present.

 

Respondent’s rights or legitimate interests to the Domain Name exist when the circumstances show “before any notice to [Respondent] of the dispute, [its] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

 

On July 20, 1998, before founding Respondent, Christophe Van Riet had searched the Patient and Trademark Office database, and found that an earlier registration of “Belgium’s Best” had been abandoned.

 

Thereafter, on July 29, 1998, Respondent incorporated as Belgium’s Best Chocolates, Inc., without knowledge of Complainant, and immediately began to do business under that name, selling, among other products, Nirvana Chocolates.

 

Respondent used the Domain Name in its business from the July 1998 incorporation to the present. Many documented communications show such use before the September 29, 1998 Domain Name registration, including the following:

 

·                    On July 27, 1998, Respondent used “Belgium’s Best Chocolates” fax cover sheets, and transmitted fax correspondence on that date to Belgium

 

·                    On August 18, 1998, Belgium’s Best Chocolates, Inc. received its Employer Identification Number from the Internal Revenue Service. On August 25, 1998, the Town of Wellesley issued a “Home Occupation Permit” for Belgium’s Best Chocolates granting permission for use of Mr. Van Riet’s home as a Respondent business location.

 

·                    Before Respondent registered the Domain Name, Respondent also received faxes as Belgium’s Best Chocolates, as shown in the faxes dated September 11, 1998 (received on September 15, 1998) and September 23, 1998.

 

Throughout its ten-year history, Respondent has been widely known as, and operated business under, its “Belgium’s Best Chocolates, Inc.” corporate identify, as established in part by miscellaneous faxes, agreements, correspondence or invoices dated October 1, 1998, October 6, 1998, October 11, 1998, December 14, 1998 and December 31, 1998.

 

From its incorporation, Respondent opened bank accounts, issued checks, processed payroll, issued invoices, and undertook other administrative tasks using Belgium’s Best Chocolates, Inc. as Respondent’s identity.

 

From Respondent’s inception, and for every label of every Nirvana Chocolates product sold, the product label states “Made in Belgium for: Belgium’s Best Chocolates, Inc.”  A wayback search also identifies that as of October, 2000, a Nirvana Chocolates webpage referred to the brand as a “trademark of Belgium’s Best Chocolates, Inc.”

 

As established by overwhelming evidence, it is clear that Respondent has conducted its business and has been known as Belgium’s Best Chocolates, Inc. since July, 1998.

 

Respondent’s rights or legitimate interests in the Domain Name renders the false claim of bad faith, for which Complainant bears the burden of proof, moot. Respondent’s registration and use of the Domain Name, however, has been undertaken in good faith as part of legitimate and longstanding business activities. Complainant cannot show, for example, that Respondent has “intentionally attempted to attract, for commercial gain, internet users to [the] web site…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location” (Policy, Para. 4(b)(iv), identifying circumstances showing bad faith).

 

Complainant’s suggestion that Respondent only registered the Domain Name because of a conversation with Ms. Dehandschutter that occurred in the Fall of 1998 (Additional Submission, ¶ 8 and ¶ 16) is false. Respondent registered the Domain Name in furtherance of its legitimate business planned, incorporated and conducted before any such conversation.

 

Complainant’s current efforts reflect the change in its management, rather than any legitimate concern about Respondent’s business. Complainant has had constructive notice of Respondent’s existence from Respondent’s initial trademark filing, undertaken on July 23, 1998. As indicated in Exhibit 14 and its dissemination to Complainant and Respondent, Complainant would have known of Respondent’s existence for the past several years. Accordingly, the delay in asserting purported Domain Name rights, while Respondent has been continuing in its marketing and business efforts, constitutes sufficient delay to justify denial of the requested relief.

 

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.

 

FINDINGS

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

I find the issues on this element in favor of Complainant.

 

Complainant has provided evidence it registered its BELGIUM’S BEST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,362,093 filed April 25, 2007 and issued January 1, 2008).  The Panel finds Complainant’s registration of its BELGIUM’S BEST mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

However, Respondent registered the <belgiumsbestchocolates.com> domain name on September 29, 1998, which is years before Complainant’s filing for trademark protection with the USPTO.  Complainant has provided evidence that it has been selling chocolate and confectionary products under the BELGIUM’S BEST mark since June of 1988.  Complainant evidences that it has had millions of dollars in revenue since 1988, and its global sales have increased each year Complainant has done business.  The Panel finds that Complainant’s BELGIUM’S BEST mark in association with its longstanding and continous use has acquired secondary meaning and thus established common law rights in the mark dating back to 1988 pursuant to Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established), see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Complainant argues that Respondent’s disputed domain name is confusingly similar to Complainant’s BELGIUM’S BEST mark.  Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the generic term “chocolate,” omits an apostrophe, and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a generic term with an obvious relationship with a complainant to a registered mark creates a confusing similarity between the mark and the disputed domain name.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).  In addition, the Panel finds that the addition of a gTLD and the omission of an apostrophe are irrelevant in distinguishing a disputed domain name from an established mark.  See Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com."); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <belgiumsbestchocolates.com> domain name is confusingly similar to Complainant’s BELGIUM’S BEST mark.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

I find the issues on this element in favor of Complainant.

 

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 in the disputed domain name.  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 asserts that Respondent is not and has never been commonly known by the disputed domain name because Respondent fraudulently and misleadingly contacted Complainant with the stated purpose of becoming a United States importer of Complainant’s goods under the name “Nirvana Chocolates.”  In addition, Respondent’s WHOIS information lists Respondent as “Christophe Van Riet, Nirvana Chocolates.”  Also, Complainant has not authorized Respondent to use its BELGIUM’S BEST mark in any manner.  Finally, Complainant alleges in its Additional Submission that Respondent has not used the disputed domain name to identify its services or goods aside from a corporate registry.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent’s <belgiumsbestchocolates.com> domain name resolves to a website offering chocolate and confectionary products in direct competition with Complainant.  The Panel finds Respondent’s effort to confuse Internet users seeking Complainant’s business to Respondent’s competing website via the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

I find the issues on this element in favor of Complainant.

 

Complainant contends in its Complaint and Additional Submission that Respondent had actual and constructive notice of Complainant’s rights in the BELGIUM’S BEST mark at the time Respondent registered the disputed domain name.  Complainant provides evidence that Respondent learned of Complainant’s use of the mark in September 1998, just before Respondent sent Complainant a fax that was created with the purpose of scheduling a meeting between Complainant and Respondent to talk about Respondent becoming a United States importer of Complainant’s goods.  The Panel finds that Respondent had actual notice of Complainant’s mark and therefore provides evidence that Respondent’s registration and use of the disputed domain name was in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

Complainant argues that Respondent’s use of the disputed domain name to offer products in direct competition with Complainant’s business is evidence of bad faith.  The Panel finds Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).

 

Complainant also argues that Respondent’s use of the disputed domain is confusingly similar to Complainant’s mark and used to profit by attracting unknowing Internet users to Respondent’s website for commercial gain.  The Panel finds this use of the disputed domain name demonstrates Respondent was attempting to profit from Complainant’s goodwill associated with its BELGIUM’S BEST mark and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

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 <belgiumsbestchocolates.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Timothy D. O’Leary, Panelist
Dated: December 1, 2008

 

 

National Arbitration Forum


 

 

 

 

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