National Arbitration Forum




The Hershey Company, Hershey Chocolate & Confectionery Corporation and Hershey Canada Inc. v. R Reaves

Claim Number: FA0704000967818



Complainants are The Hershey Company, Hershey Chocolate & Confectionery Corporation and Hershey Canada Inc. (collectively, “Complainant”), represented by Kathleen S. Herbert, of The Ollila Law Group, LLC, 2060 Broadway, Suite 300, Boulder, CO 80302.  Respondent is R Reaves (“Respondent”), 70 Commerce/Hwy 354, Walnut, MS 38683.



The domain name at issue is <>, registered with Go Daddy Software, Inc.



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.


Clive Elliott as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 26, 2007.


On April 23, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 by e-mail.


A timely Response was received and determined to be complete on May 18, 2007.


An Additional Submission was received from Complainant on May 23, 2007.


On May 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.



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




A. Complainant


Complainant operates one of the largest chocolate production facilities in the world.  For more than a century, it has manufactured and sold chocolate bars and other confectionery items under the HERSHEY’S trademark.  In 1907, Complainant adopted the KISSES mark for use in connection with chocolate candy.  Complainant asserts that it has established rights in the KISSES trademark through long term, continuous and exclusive use of the mark in commerce in the U.S. and worldwide.


Complainant states that it has established rights in the U.S. in a family of KISSES trademarks, which feature Complainant’s trademark, KISSES, used separately and in conjunction with Complainant’s famous mark, HERSHEY’S and additional words, phrases or designs.  In the result, Complainant contends that its KISSES mark is famous and recognized globally.


Complainant contends that Respondent has registered the <> domain name which is nearly identical to the Complainant’s famous KISSES trademark except that the domain name (1) uses the singular version of KISS, rather than the plural, KISSES; (2) adds the generic top-level domain name (gTLD) “.com;” and (3) adds the term “chocolate,” which is a common term in the candy industry and specifically describes Complainant’s goods, long associated with Complainant’s KISSES trademark.


Complainant points out that the only content on Respondent’s website <> was a notice  “COMING SOON THE SWEETEST SITE ON THE NET” and a logo “,” which includes a design element comprised of a chocolate character.  Complainant states that it has established rights in a number of trademarks containing the phrase “SWEETEST PLACE” including “THE SWEETEST PLACE ON EARTH,” “THE SWEETEST NAME IN SNACKING” and “THE SWEETEST SITE ON THE WEB” which is nearly identical to Respondent’s slogan “The Sweetest Site of the Net.”


Complainant asserts that Respondent’s sole purpose in registering and using the disputed domain name is to trade on the fame of Complainant’s trademark and to deliberately increase Internet traffic to its website <>, which has no relation to Complainant.


B. Respondent          


Respondent in turn asserts that its domain <> is a two word generic TLD with the extension of dot com and that the domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.  Respondent notes that he did not receive any information as to trademark ownership by Complainant for the words “Chocolate” and “Kiss” and that both of these words have several meanings in the dictionary that do not refer to candy, making the domain <> a domain useful for Respondent in future development.


Respondent states that the domain does not include or make mention of any reference or infringement on any trademarks as listed by Complainant, nor does it have specific relation to any specific brand name, specific origin or specific item that Complainant claims trademark ownership.


Respondent points out that he has owned the domain from since 2000 and that it is current and registered until 2008.  Respondent goes on to note that the domain was originally purchased on E-bay and was purchased as an addition to Respondent’s extensive online domain portfolio.  The domain was purchased for future development as an Internet venture and also as a possible asset of the portfolio to be sold or traded in the future.


Respondent goes on to state that he hired a graphic designer in 2000 to create what he thought would be an effective logo to place on the home page prior to development of a site, as Respondent did not wish to use the generic home page provided by the register company The designer submitted to Respondent a logo which is currently displayed on the domain.  Respondent states that he made it clear to the designer to create a logo that would not infringe any trademarks of any company or organization.


It is asserted that prior to the present Complaint, Respondent received no complaints as to any trademark issues with any company or organization.


Respondent states that the domain is currently awaiting development once a suitable idea is decided and that he is in no way trying to misleadingly divert consumers or to tarnish the trademarks or service marks at issue.


Respondent submits that Complainant has improperly waited seven years before taking action and that if Complainant has been in business for over a century and this was a good domain for their business that they would have reserved it many years ago.


C. Additional Submissions


By way of reply, in its Additional Submission, Complainant asserts that Respondent chose a domain name that incorporates Complainant’s famous trademark, KISSES, and that consumers are likely to believe that <> is sponsored by Complainant and will be confused into thinking that they have landed on a site owned by Complainant and will expect the site to offer information about Complainant and its products. 


It submits that the confusion is further exacerbated by Respondent’s inclusion of other well-known trademarks owned by Complainant; namely, Complainant’s Conical Configuration Trademarks, Chipits Character Marks, KISSES Character Mark and the phrase, “The Sweetest Site on the Net,” which is confusingly similar to a trademark owned by Complainant: “The Sweetest Site on the Web.”



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 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;

(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


Complainant asserts rights in the KISSES trademark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) in connection with chocolate candy (Reg. No. 2,416,701 issued January 2, 2001, filed October 17, 1996).  As such rights date back to the filing date of the trademark application and predate Respondent’s registration of the <> domain name in 2000.  Therefore, Complainant has established rights in the KISSES mark for purposes of satisfying Policy ¶ 4(a)(i).  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also 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)).


Complainant also asserts that it has longstanding common law rights in the KISSES mark.  It alleges that it has manufactured, distributed, and sold chocolate candy products under the KISSES mark since 1907.  The Panel has little difficulty in finding that Complainant’s continuous and extensive use of the KISSES mark for 100 years demonstrates that the mark has acquired secondary meaning in association with Complainant’s products, which shows that Complainant has common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Artistic Pursuit LLC v., FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).


Complainant argues that the <> domain name is confusingly similar to its KISSES mark because the disputed domain name alters Complainant’s mark by eliminating the letters “e” and “s” from the end of the mark, adding the descriptive term “chocolate” to the front of the mark, and appending the generic top-level domain (“gTLD”) “.com.” 


The Panel considers that the combination of elements in the disputed domain name is calculated to suggest the involvement of Complainant by reference to the clearly descriptive term “chocolate” which fairly describes the nature of the relevant products and indeed the commercial reach of Complainant in the confectionery market.


In terms of the minor differences that exist, the Panel is of the view that these alterations are not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 21, 2007) (finding that the respondent failed to differentiate the <> domain name from the complainant’s AIM mark my merely adding the term “profiles”).


In the circumstances the disputed domain name is inherently similar to Complainant’s KISSES mark and likely to be confusing to the public on face value, as suggesting either an operation of Complainant or one associated with or endorsed by it.  In reaching this conclusion the Panel does so by comparing the KISSES trademark with the disputed domain name and without taking into account any other confusingly similar indicia adopted by Respondent.  That issue however is directly relevant and dealt with under the following two grounds.


Accordingly, the ground is established.


Rights or Legitimate Interests


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.  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 claims that Respondent’s website displays the text “COMING SOON THE SWEETEST SITE ON THE NET,” the logo “,” and a character made of chocolate.  Complainant alleges that this character appears similar to one of Complainant’s characters, thereby giving the impression that the content of the website is affiliated with Complainant.  The Panel considers that this allegation is clearly made out and that Complainant's argument has merit. 


Based on Complainant’s assertions, the Panel finds that Respondent has not used the <> domain name in connection with 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 State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). 


On this basis, the ground is made out.


Registration and Use in Bad Faith


As noted above, Complainant alleges that Respondent’s <> domain name resolves to a picture of a character shaped like a Hershey’s Kiss, the main product Complainant markets and sells under the KISSES mark, and displaying the text “COMING SOON THE SWEETEST SITE ON THE NET.” 


The Panel infers that by doing so Respondent has sought to attract Internet users looking for information on Complainant’s products under the KISSES mark to its own website for commercial gain and implying an affiliation with Complainant, and that this provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See GMAC LLC v. WhoisGuard Protected, FA 924715 (Nat. Arb. Forum May 2, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”); see also Tower Laboratories Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).


Accordingly, this ground is also made out.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


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





Clive Elliott, Panelist
Dated: June 8, 2007



Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum