Spangler Candy Company v. Marketing Total S.A.
Claim Number: FA0706000998098
Complainant is Spangler Candy Company (“Complainant”), represented by Lyman
F. Spitzer, of Shumaker, Loop & Kendrick, LLP,
1000
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <spanglerwholesale.com>, registered with Capitoldomains, Llc.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 4, 2007.
On June 7, 2007, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <spanglerwholesale.com> domain name is registered with Capitoldomains, Llc and that Respondent is the current registrant of the name. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2007 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@spanglerwholesale.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 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <spanglerwholesale.com> domain name is confusingly similar to Complainant’s SPANGLER mark.
2. Respondent does not have any rights or legitimate interests in the <spanglerwholesale.com> domain name.
3. Respondent registered and used the <spanglerwholesale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Spangler Candy Company, is a wholesaler or bulk seller of candy and other products, primarily over the Internet. In conjunction with the provision of these goods, Complainant has registered the SPANGLER mark (Reg. No. 1,748,722 issued January 26, 1993) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <spanglerwholesale.com> domain name on October 23, 2006. The disputed domain name resolves to a website featuring sponsored links to third-party commercial websites, some of which compete directly with Complainant’s business.
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.
Complainant asserts rights in the SPANGLER mark through
registration with the USPTO. The Panel
finds that Complainant’s timely registration of the SPANGLER mark with the
USPTO sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc.
v. Triantafillos, FA
485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in
the BAKERS SQUARE mark by registering it with the United States Patent and
Trademark Office (“USPTO”).”); see
also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <spanglerwholesale.com> domain name contains Complainant’s protected mark in its entirety and adds both the generic or descriptive term “wholesale,” which appears to be related to Complainant’s wholesale candy business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic or descriptive term and a gTLD to an otherwise identical mark fails to sufficiently distinguish the domain from the mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> domain name from the DURACELL mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
In scenarios where a complainant has
made a prima facie case in support of
its allegations, the burden shifts to the respondent to bring forth tangible
evidence indicating that it has rights or legitimate interests in accordance
with Policy ¶ 4(a)(ii). See SEMCO Prods.,
LLC v. dmg world media (
The disputed domain name resolves to a website displaying
sponsored links to third-party commercial websites, some of which directly
compete with Complainant’s candy business.
The Panel finds that Respondent’s use is neither a bona fide offering of goods or services in accordance with Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat.
Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain
name that was confusingly similar to the complainant’s mark to display links to
the complainant’s competitors did not constitute 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 also Wal-Mart Stores, Inc.
v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the
respondent’s use of domain names confusingly similar to the complainant’s
WAL-MART mark to divert Internet users seeking the complainant’s goods and
services to websites competing with the complainant did 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)).
An examination of Respondent’s WHOIS registration information indicates that the registrant of the <spanglerwholesale.com> domain name is “Marketing Total S.A.” In light of the WHOIS registration information and in lieu of any contrary evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website featuring, inter alia, links to competing websites. The Panel finds that Respondent’s use amounts to a disruption of Complainant’s business and evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Services, FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Presumably, Respondent receives monetary compensation from
its diversionary use of the disputed domain name. Further, it is possible that unsuspecting
Internet users are likely to become confused as to the source and affiliation
of the resulting websites. The Panel
finds that Respondent’s use of the disputed domain name suggests an attraction
for commercial gain, implicating Policy ¶ 4(b)(iv). See
Asbury Auto. Group, Inc. v.
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 <spanglerwholesale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary , Panelist
Dated: July 23, 2007
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