Hershey Chocolate & Confectionery Corporation v. Times Communications
Claim Number: FA0509000565743
Complainant is Hershey Chocolate & Confectionery Corporation (“Complainant”), represented by Kathleen S. Herbert, of Setter Ollila LLC, 2060 Broadway, Suite 300, Boulder, CO 80302. Respondent is Times Communications (“Respondent”), 103 Laurel Ave., Bradford, MA 01835.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hersheywrappers.com>, registered with Go Daddy Software.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2005.
On September 21, 2005, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <hersheywrappers.com> domain name is registered with Go Daddy Software and that Respondent is the current registrant of the names. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 September 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 2005 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@hersheywrappers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <hersheywrappers.com> domain name is confusingly similar to Complainant’s HERSHEY’S mark.
2. Respondent does not have any rights or legitimate interests in the <hersheywrappers.com> domain name.
3. Respondent registered and used the <hersheywrappers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hershey Chocolate & Confectionary Corporation, has been using the HERSHEY’S mark in connection with its confectionary goods business since as early as 1894. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the HERSHEY’S mark (e.g., Reg. No. 54,041, issued June 19, 1906). Complainant also owns trademark registrations for the HERSHEY’S mark in over a dozen other countries throughout the world including Canada and Peru.
Respondent registered the disputed domain name on May 2, 2004 and is using the domain name to redirect Internet users to Respondent’s website at the <savethewrapper.com> domain name where Respondent advertises the sale of custom candy bar overwrappers for chocolate and confectionary related goods.
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 that it has established rights in the HERSHEY’S mark through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last one hundred and ten years. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant alleges that Respondent’s <hersheywrappers.com> domain name is confusingly similar to Complainant’s HERSHEY’S mark pursuant to Policy ¶ 4(a)(i), as the domain name incorporates Complainant’s mark with the addition of the generic or descriptive term, “wrappers.” The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Furthermore, the addition of the generic top-level domain
“.com” does not negate the confusing similarity of Respondent’s domain name to
Complainant’s HERSHEY’S mark, pursuant to Poilcy ¶ 4(a)(i). See 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); see also
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May
27, 2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <hersheywrappers.com> domain
name. When a complainant estabilshes a prima
facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Additionally, Respondent is not commonly known by the <hersheywrappers.com> domain name. Thus, the Panel concludes that respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <hersheywrappers.com>
domain name to redirect Internet users to Respondent’s website at the
<savethewrapper.com> domain name where Respondent advertises the sale of
custom candy bar overwrappers for chocolate and confectionary related
goods. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
mark to divert Internet users for
Respondent’s own commercial gain does 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 MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where the respondent attempted to profit
using the complainant’s mark by redirecting Internet traffic to its own
website); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered the <hersheywrappers.com>
domain name to disrupt Complainant’s business, because Respondent’s domain name
redirects Internet users to Respondent’s commercial website that offers
products in competition with Complainant.
Therefore, the Panel finds that Respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is
using the <hersheywrappers.com> domain name to intentionally
attract, for commercial gain, Internet users to its website, by creating a
likelihood of confusion with Complainant as the source, sponsorship,
affiliation or endorsement of its website.
See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if the respondent profits from its diversionary
use of the complainant's mark when the domain name resolves to commercial
websites and the respondent fails to contest the complaint, it may be concluded
that the respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
Respondent is using the <hersheywrappers.com> domain name, which contains Complainant’s HERSHEY’S mark, to redirect Internet users to Respondent’s website advertising the sale of custom candy bar overwrappers for chocolate and confectionary related goods that compete with Complainant’s business. This suggests that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the domain name and chose the disputed domain name based on the goodwill Complainant has acquired in its HERSHEY’S mark. Respondent’s registration of a domain name containing Complainant’s mark in spite of Respondent’s actual knowledge of Complainant’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”).
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 <hersheywrappers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 4, 2005
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