WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MGW Group, Inc. v. Runited

Case No. D2003-0379

 

1. The Parties

The Complainant is MGW Group, Inc. of Plano, Texas, United States of America, represented by Baker Botts, LLP of United States of America.

The Respondent is Runited of St. Petersburg, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <cookiesbydesigns.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2003. On May 19, 2003, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On May 27, 2003, eNom transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 18, 2003.

The Center appointed Dr. de Cock Buning as the sole panelist in this matter on July 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant.

MGW is the franchiser for the COOKIES BY DESIGN franchise shops that produce and sell several kinds of decorated cookies. MGW started using its COOKIES BY DESIGN mark in 1991. Presently, MGW has over 187 shops throughout the United States, which advertise and sell cookie products, inter alia, under the COOKIES BY DESIGN mark and logos featuring the mark COOKIES BY DESIGN. MGW also sells its products over the Internet at "www.cookiebouquet.com" and "www.cookiesbydesign.com". Gross sales for the year 2002, were approximately $57,000,000.

MGW and its franchisees spend approximately $1,750,000 to $2,000,000 per year on advertising, marketing and public relations. MGW's franchise system has won several awards in the United States. As a result of extensive advertising and promotion by MGW, the COOKIES BY DESIGN mark is well-known among consumers and in the retail cookie business.

MGW has used the trademark COOKIES BY DESIGN in commerce throughout the United States since December 1991. MGW owns, inter alia, the following registrations incorporating the COOKIES BY DESIGN trademark:

- COOKIES BY DESIGN, Reg. No. 1,728,507, filed December 7, 1990, and registered on October 27, 1992, for 'retail store services in the field of cookies,' in International Class 42.

- COOKIES BY DESIGN, Reg. No. 1,892,289, filed January 10, 1994, and registered on May 2, 1995, for 'cookies,' in International Class 30.

- COOKIES BY DESIGN THE ORIGINAL COOKIE BOUQUET "THE SWEETEST BOUQUET IN TOWN" ESTABLISHED 1983, and Design, Reg. No. 2,072,927, filed January 24, 1994, and registered on June 24, 1997, for 'retail store and mail order services in the field of cookies,' in International Class 42.

- COOKIES BY DESIGN THE ORIGINAL COOKIE BOUQUET "THE SWEETEST BOUQUET IN TOWN" ESTABLISHED 1983, and Design, Reg. No. 2,072,928, filed January 24, 1994, and registered on June 24, 1997, for 'cookies,' in International Class 30.

The Respondent has not answered the Complainantís factual assertions or evidence. However, by e-mail of May 28, 2003, Respondent has indicated that it wishes to voluntarly transfer the domain name.

After receipt of this e-mail Complainant inquired by e-mail on June 5, 2003, whether the Center could arrange such transfer while avoiding the release of the lock on the domain name.

The Center replied to Complainant by e-mail of June 6, 2003, that it cannot arrange for the transfer of the domain name, but can suspend the proceedings for a period of 30 days upon receipt of a request for suspension. Upon receipt of the Notification of Suspension, the Registrar will unlock the domain name registration solely for the purpose of allowing the respondent to transfer the domain name to the Complainant. The Center further confirmed that if a transfer does not take place within the 30 day period, the suspension can be renewed, or the proceeding will continue upon request of complainant.

Complainant replied by e-mail of June 6, 2003, that since that is foresees difficulties in assuring the transfer of the domain name to Complainant rather than to someone else. Complainant would prefer the procedure to continue and to acquire a decision in this matter.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends as follows:

(i) The domain name <cookiesbydesigns.com > incorporates the COOKIES BY DESIGN trademark and is virtually identical to the COOKIES BY DESIGN trademarks. Complainant's use of the trademarks long predates any use or registration of the domain name.

(ii) Respondent is not making a legitimate non-commercial or fair use of the domain name. The web site is a commercial site. Respondent is not a licensee of Complainant and is not known by the name COOKIES BY DESIGN. There is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.

(ii) The domain name has been registered and used in bad faith. Internet users who mistype Complainant's COOKIES BY DESIGN mark are instantly transferred to Respondent's web site. Respondent chose the domain name <cookiesbydesigns.com> to "free-ride" on the goodwill associated with the COOKIES BY DESIGN trademark by creating a likelihood of confusion and divert Internet users to its web site where it provides pornographic services.

Respondent's use of the domain name in conjunction with pornographic and sexually explicit images tarnishes and dilutes Complainant's COOKIES BY DESIGN trademark by giving consumers the impression that Complainant endorses, sponsors, or is otherwise affiliated with Respondent's web site and the pornographic content thereof.

B. Respondent

The Respondent did not formally reply to the Complainantís contentions.

However as indicated above, by e-mail of May 28, 2003, Respondent has indicated that it wishes to transfer the domain name because Respondent, as it states in its e-mail, is "not interested in the domain name" and that "<cookiesbydesigns.com> was directed to the wrong page."

 

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. The aforementioned e-mail sent by Respondent to the Complainant and the Center on May 28, 2003, is a clear indication that the Respondent actually received the Complaint.

However, as previously indicated, the Respondent did not file a formal reply to the Complaint and has not sought to answer the Complainantís assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.

The Respondentís default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.C).

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant is the owner of the COOKIES BY DESIGN trademark used for franchise shops, that produce and sell several kinds of decorated cookies. Complainant started using its COOKIES BY DESIGN mark in 1991, and has many shops throughout the United States and sells its products over the Internet at, inter alia, www.cookiesbydesign.com. As a result of extensive advertising and promotion, the COOKIES BY DESIGN mark is a well-known trademark.

The Respondent has not contested the Complainantís assertions.

In the circumstances, the Panel finds that the Complainant has rights in the COOKIES BY DESIGN trademark.

The Policy requires that the disputed domain name be "identical or confusingly similar" to the Complainantís COOKIES BY DESIGN trademark.

The Respondent incorporates the Complainantsí entire COOKIES BY DESIGN mark in the disputed domain name <cookiesbydesigns.com> with the mere addition of "s", thus introducing a small typographical change, from Complainantís COOKIES BY DESIGN mark.

In the circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainantís COOKIES BY DESIGN trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights or Legitimate Interests

Even though the Respondent has not contested the Complainantís assertions, it is upon the Panel to consider whether the Respondentís use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrantís rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainantís mark.

To satisfy the requirements of Policy paragraph 4(c)(i), the Respondentís use of the disputed domain name must be in connection with a "bona fide" offering of goods or services. In the circumstances of this case, the Respondentís use of the disputed domain name is not "bona fide" within the meaning of Policy paragraph 4(c)(i) because:

(1) there is no apparent legitimate justification for the Respondentís registration and use of the disputed domain name <cookiesbydesigns.com> that is confusingly similar to the Complainantís trademark and its <cookiesbydesign.com> domain name for its web site;

(2) Respondent's interest in the domain name appears to be in its value as a typographical error of Complainantís web site.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondentís trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. According to the uncontested statement of the Complainant, the Respondent is, or at least was using the domain name for an instant transfer to Respondent's commercial pornographic web site that generates profit from users who pay to view pornographic images and/or from banner advertisements.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.

Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.

The Complainant does not rely on Policy paragraphs 4(b)(i), 4(b)(ii) or 4(b)(iii) but relies upon Policy paragraph 4(b)(iv), which requires the Complainant to establish that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its web site for commercial gain.

The Panel finds that the Respondent apparently knew of the Complainantís COOKIES BY DESIGN trademark and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondentís web site, based upon the following circumstances:

(1) the Complainantís COOKIES BY DESIGN trademark is well-known;

(2) there is no apparent connection or relationship between the disputed domain name and the Respondent or its web site;

(3) there is no other apparent legitimate justification for the Respondentís registration and use of the disputed domain name for its web site;

(4) the Respondent has not denied any knowledge of the Complainant or its trademark; and

(5) the disputed domain name is a confusingly similar misspelling of the Complainantís <cookiesbydesign.com> domain name.

In addition, the Panel draws an adverse inference from the Respondentís failure to provide any explanation or rationale for its use of the disputed domain name for its web site.

The Panel also finds that the Respondentís web site results in commercial gain to the Respondent since Respondent uses, or at least was using, the domain name for an instant transfer to Respondent's commercial pornographic web site that generates profit from users who pay to view pornographic images and/or from banner advertisements. In the absence of any reply by the Respondent, the Panel finds that the Respondentís web site generates, or at least was generating, revenue for the Respondent in that manner.

The Respondentís registration and use of the disputed domain name is a form of bad faith domain name registration and use known as "typosquatting" Ė the registration of domain names that are identical to popular web site domain names except for slight differences that may occur as a result of common keyboarding or spelling errors in order to misdirect Internet users.

Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv).

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <cookiesbydesigns.com> be transferred to the Complainant.

 


 

Madeleine De Cock Buning
Sole Panelist

Dated: July 14, 2003