WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koppers Chocolate Specialty Co., Inc. v. Seymour Leonard
Case No. D2001-0822
1. The Parties
1.1 The Complainant is Koppers Chocolate Specialty Co., Inc., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 39 Clarkson Street, New York, New York, United States of America.
1.2 The Respondent is Seymour Leonard, an individual having an address at 9781 Seacrest Circle, Suite 201, Boynton Beach, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <kopperschocolates.com>, which domain name is registered with Bulkregister.com, Inc. (the "Registrar"), based in Baltimore, Maryland, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 26, 2001, and the signed original together with four copies forwarded by express courier was received on June 22, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 26, 2001.
3.2 On June 26, 2001, a Request for Registrar Verification was transmitted to the Registrar, requesting it to: (1) confirm that the domain name at in issue is registered with the Registrar; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On June 27, 2001, the Registrar confirmed by reply e-mail that the domain name at issue is registered with the Registrar is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on June 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of July 17, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 One hard copy of a Response was received on July 9, 2001. On July 9, 2001, the WIPO Center transmitted to the parties a Response Deficiency Notification, indicating the following deficiencies: 1) the Response was not submitted in electronic format as required by the Uniform Rules, Paragraph 5(b); 2) the Response was not submitted in one original and four copies, as required by the Uniform Rules, Paragraph 5(b) and the Supplemental Rules, Paragraph 3(c); 3) the Response does not state that a copy of the Response has been sent or transmitted to the Complainant in accordance with the Uniform Rules Paragraph 2(b), as required by the Uniform Rules Paragraph 5(b)(vii). The notification also indicated that the Response had been transmitted to the Complainant at an incorrect email address.
3.7 On July 10, 2001, the WIPO Center received in electronic format and on July 13, 2001, the WIPO Center received five additional hardcopies of the Response. On July 13, 2001, the WIPO Center received an Addendum to the Response by Fax, confirming the authorized representative of Respondent.
3.8 On July 11, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was August 14, 2001. This was subsequently extended to August 24, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the trademark KOPPERS in connection with candy with the United States Patent Office ("USPTO") on June 28, 1983, showing a first use in commerce in November 1938. Complaint, Annex C.
4.2 Complainant has used the mark and has licensed the use of the mark for over 60 years in conjunction with the sale of chocolates and confections.
4.3 Complainant has expended substantial time and money in advertising and promoting the KOPPERS mark, including at trade shows held around the United States, and in magazines and trade publications. Complainant's chocolates are sold at specialty stores and at department stores such as Macys Saks Fifth Avenue, and Marshalls.
4.4 Complainant has registered the domain name <kopperschocolate.com>, which is devoted exclusively to the promotion and sales of chocolates and confections bearing Complainant's KOPPERS mark. Complaint, Annex D.
4.5 Respondent registered the domain name at issue on June 19, 2000.
4.6 Respondent has licensed the domain name at issue to an individual who is using the domain name at issue to resolve to a web site which prominently displays Complainant's mark and contains the text: "Koppers®. Since 1937. Koppers Chocolates. ‘Originator of the Chocolate Covered Espresso Beans, Milk Chocolate Gummi Bears & over 2000 Gourmet Chocolates and Confections. Buy them at Discounted Prices at www.buycandynow.com." Complaint, Annex E. At the linked and referenced site, Respondent's licensee is selling candy and confections which directly compete with Complainant, as well as Complainant's candy products. Id.
4.7 Shortly after Complainant learned of the registration of <kopperschocolates.com>, on October 29, 2000, Complainant sent Respondent a cease and desist letter, advising Respondent that the use of the domain name infringed Complainant's registered mark and suggested that Complainant sponsored the web site to which the domain name resolved. Complainant demanded that Respondent cease using the domain name at issue. Complaint, Annex F. On November 12, 2000, Respondent sent Complainant a letter stating that his agent was within its rights in the use of the name, since it was selling products that Complainant had sold for resale and was using the name to promote Complainant's products. The letter also offered to discuss the sale of the domain name to Complainant. Id.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that he has rights and legitimate interests in respect of the domain name at issue, because the domain name at issue is being used in conjunction with the sale of Complainant's products and is being used in good faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue <kopperschocolates.com> is confusingly similar to the mark in which the Complainant has rights. Confusing similarity has repeatedly been found where the mark is incorporated into a domain name with a term added which related to the goods or services with which the mark is used. Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283 ("hotels" added to FORTE mark in <fortehotels.com>); Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347 ("champagne" added to CLICQUOT mark in various domain names).
6.5 Respondent contends that he has rights and legitimate interests in the use of the domain name at issue, since he is reselling Complainant's products.
6.6 The Panel finds that Respondent has used the mark in question to confuse customers as to Plaintiff's sponsorship of the web site to which the domain name at issue resolves and that Respondent has used the domain name at issue to establish a web site which links to Respondent's web site, where not only complainants' products, but those of competitors are marketed.
6.7 Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137.
6.8 The facts show that a user who references the domain name at issue arrives at a site which appears to be owned or sponsored by Complainant, See, Paragraph 4.6, above. There the user is supplied with a link to the web site of Respondent's agent, at which is offered, not only Complainant's products, but those of direct competitors as well. The Panel finds that Respondent is using the domain name to intentionally attempt to attract for commercial gain Internet users to Respondent's agent's web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or the products offered at the linked web site. Policy, Paragraph 4 (b)(iv).
6.9 Accordingly, the Panel finds that the domain name at issue has been registered and is being used in bad faith.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <kopperschocolates.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 24, 2001