national arbitration forum

 

DECISION

 

Hershey Chocolate & Confectionery Corporation v. Yao Renfa

Claim Number: FA0911001295942

 

PARTIES

Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen S. Ryan, of The Ollila Law Group LLC, Colorado, USA.  Respondent is Yao Renfa (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hersheys.mobi>, registered with Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2009.  The Complaint was submitted in both Chinese and English.

 

On November 25, 2009, Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <hersheys.mobi> domain name is registered with Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn 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 December 7, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 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@hersheys.mobi by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hersheys.mobi> domain name is identical to Complainant’s HERSHEY’S mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hersheys.mobi> domain name.

 

3.      Respondent registered and used the <hersheys.mobi> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Hershey Chocolate & Confectionery Corporation, is a candy manufacturer that markets its products under the HERSHEY’S mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) in 1906 (Reg. No. 54,041), and with the State Intellectual Property Office of the People’s Republic of China (“SIPO”) on May 15, 1982 (Reg. No. 157,570).  Complainant has used the HERSHEY’S mark continuously in commerce since at least as early as 1906, and is now one of the most famous chocolate and candy companies in the world.

 

Respondent, Yao Renfa, registered the <hersheys.mobi> domain name on September 26, 2006.  The disputed domain name does not resolve to an active website. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the HERSHEY’S mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (Reg. No. 54,041 issued in 1906) and with the SIPO (Reg. No. 157,570 issued May 15, 1982).  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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant contends that Respondent’s <hersheys.mobi> domain name is identical to Complainant’s HERSHEY’S mark.  The <hersheys.mobi> domain name differs from Complainant’s mark in two ways: (1) the apostrophe has been removed from the mark; and (2) the generic top-level domain (“gTLD”) “.mobi” has been added.  The Panel finds that the removal of an apostrophe does nothing to distinguish a domain name from a mark that it incorporates for the purposes of Policy ¶ 4(a)(i), because no domain name can contain an apostrophe.  The Panel also finds that the addition of a gTLD does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a top-level domain.  Therefore, the Panel finds that these changes do not create any distinguishing differences in the disputed domain name, and so the <hersheys.mobi> domain name is identical to Complainant’s HERSHEY’S mark pursuant to Policy ¶ 4(a)(i).  See 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 Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the <hersheys.mobi> 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).  Respondent has failed to respond to these proceedings.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant contends that Respondent is not commonly known by the <hersheys.mobi> domain name nor has it ever been the owner or licensee of the HERSHEY’S mark.  Respondent has been identified as “Yao Renfa,” and nothing in the WHOIS record for the disputed domain name lists Respondent as any variant on the HERSHEY’S mark.  Respondent also has failed to show any evidence contrary to Complainant’s contentions.  The Panel therefore finds that Respondent is not commonly known by the <hersheys.mobi> domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent is not making an active use of the <hersheys.mobi> domain name.  Previous panels have found that a respondent’s failure to make active use of a disputed domain name is neither 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).  Consequently, under these circumstances this Panel finds that Respondent’s use of the <hersheys.mobi> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that when considering bad faith registration and use of a domain name that it may consider the totality of the circumstances while making a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Respondent’s disputed domain name does not resolve to an active website.  Complainant contends that Respondent registered the disputed domain name September 26, 2006, and has since failed to make an active use of the disputed domain name.  The Panel finds that Respondent’s failure to make an active use of the identical, disputed domain name compels a finding in this case of bad faith registration and use under Policy ¶ 4(a)(iii).  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that failure to make active use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <hersheys.mobi> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  January 18, 2010

 

 

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