Hershey Chocolate & Confectionery Corporation v. Bridge Port Enterprises Limited
Claim Number: FA0906001268733
Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen
S. Ryan, of The Ollila Law Group, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ehershey.com>, registered with Tucows 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2009.
On June 17, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ehershey.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 June
18, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 8, 2009
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@ehershey.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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:
1. Respondent’s <ehershey.com> domain name is confusingly similar to Complainant’s HERSHEY mark.
2. Respondent does not have any rights or legitimate interests in the <ehershey.com> domain name.
3. Respondent registered and used the <ehershey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells chocolates and other confectionary
products under the HERSHEY’S mark, which Complainant registered with the United
States Patent and Trademark Office (“USPTO”) in 1906 (Reg. No. 54,041). Complainant has used the HERSHEY’S mark
continuously in commerce in the
Respondent registered the <ehershey.com> domain name June 12, 2002. The disputed domain name resolves to a website that features links to the websites of both Complainant and Complainant’s competitors.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant has
established sufficient rights in the HERSHEY’S mark through registration of the
mark with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant contends that
Respondent’s <ehershey.com> domain name is confusingly similar to its HERSHEY’S
mark. The <ehershey.com> domain name differs from Complainant’s mark in three ways: (1) the
letter “e” has been added to the beginning of the mark; (2) the apostrophe and
the letter “s” have been removed from the end of the mark; and (3) the generic
top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that neither the addition of
a letter nor the removal of an apostrophe and another letter are sufficient to
distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct.
19, 2000) (finding that the domain names <ecanadiantire.com> and
<e-canadiantire.com> are confusingly similar to Canadian Tire’s
trademarks); see also Daddy’s Junky
Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003)
(“The lack of an apostrophe in the domain name is not a distinguishing
difference because punctuation is not significant in determining the similarity
of a domain name and a mark.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the
<pfzer.com> domain name was confusingly similar to the complainant’s
PFIZER mark, as the respondent simply omitted the letter “i”). The Panel also finds that the addition of the gTLD “.com” does not sufficiently
distinguish a domain name from the incorporated mark for the purposes of Policy
¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis). The
Panel finds that because these changes do not sufficiently distinguish the
disputed domain name from Complainant’s mark, Respondent’s disputed domain name
is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <ehershey.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by the <ehershey.com> domain
name nor has it ever been the owner or licensee of the HERSHEY’S mark. The WHOIS listing for the disputed domain
name lists Respondent as “Bridge Port
Enterprises Limited,” and Respondent has failed to present any evidence
that is contrary to Complainant’s contentions.
The Panel therefore finds that Respondent is not commonly known by the <ehershey.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also 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).
At the website that
resolves from the <ehershey.com>
domain name, Respondent is linking
both to Complainant’s website and to websites that compete with Complainant’s
business. The Panel finds that
Respondent’s use of the <ehershey.com> domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <ehershey.com>
domain name under Policy
¶ 4(c)(iii). See Skyhawke Techs., LLC v.
Tidewinds Group, Inc., FA 949608
(Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com>
domain name to display a list of hyperlinks, some of which advertise
Complainant and its competitors’ products.
The Panel finds that this use of the disputed domain name does not
constitute 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 also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain
name to host a series of hyperlinks and a banner advertisement was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website that resolves from
the disputed domain name, and from there to third-party websites owned by
Complainant’s competitors. Complainant
also contends that Respondent intentionally disrupts Complainant’s business by this
diversion to competing websites. The
Panel finds that Respondent’s disruption of Complainant’s business is evidence
that Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also
Complainant also contends that Respondent is gaining commercially from promoting competing goods and services on the website that resolves from the <ehershey.com> domain name, and collecting click-through fees from the third-party websites. The Panel finds that Respondent’s commercial gain is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ehershey.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 23, 2009
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