WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dart Industries Inc. v. Leslie Rubin
Case No. D2006-0146
1. The Parties
The Complainant is Dart Industries Inc., Orlando, Florida, United States of America, represented by Melbourne IT Corporate Brand Services Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Leslie Rubin, Bronx, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <tupperwarebrands.com> and <tupperwarebrandscorporation.com> (collectively “Domain Names”) are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2006. On February 6, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On February 6, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 16, 2006.
The Center verified that the Complaint together with the amendment to 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 February 20, 2006. The due date for Response was March 12, 2006. The Respondent requested an extension to file a response and the Center, having consulted the Complainant, granted a short extension until March 17, 2006. However, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2006.
The Center appointed Ms. Harrie R. Samaras as the Sole Panelist in this matter on March 31, 2006. 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
Complainant is a wholly-owned subsidiary of Tupperware Brands Corporation (“Tupperware Brands”) and is the record owner of trademarks used by Tupperware Brands. Tupperware Brands is a global direct seller of domestic goods and homeware products through its independent sales force of approximately 1.9 million people. Tupperware products are found in 90% of American homes.
Owing to extensive and long-term use, as well as significant expenditures in advertising, the trademark TUPPERWARE has become a well-known trademark within the homeware and domestic goods industries. Complainant has registered the TUPPERWARE mark as a word and figurative mark for many products and services in several classes in more than 140 countries. In addition, Complainant has registered the TUPPERWARE mark or variations of it as domain names in over 30 different TLDs worldwide.
On December 5, 2005, Tupperware Brands issued a press release announcing that the name of the parent company was changing from Tupperware Corporation to Tupperware Brands Corporation. That day, Respondent registered the Domain Names. Complainant first became aware of Respondent’s registration on December 7, 2005. Both of the domains <tupperwarebrands.com> and <tupperwarebrandscorporation.com> resolve to a GoDaddy.com, Inc. page with sponsored links that states: “This page is parked free, courtesy of GoDaddy.com.”
On December 7, 2005, Complainant sent an email to Respondent seeking to discuss the transfer of the Domain Names to Tupperware Brands, then on January 13, 2006, Complainant sent a cease and desist letter to Respondent again requesting the transfer of the Domain Names. Complainant sent the letter to the address Respondent specified in the registrant contact fields of the Whois records. Respondent failed to reply to either correspondence.
On January 18, 2006, a further search of the GoDaddy.com, Inc. Whois database revealed that the Whois records for <tupperwarebrands.com> and <tupperwarebrandscorporation.com> had been changed to reflect that Domains By Proxy was the registrant. On January 20, 2006, Complainant sent another cease and desist letter to Domains By Proxy, Inc. requesting immediate transfer of the Domain Names with a short reply deadline. Domains By Proxy responded indicating that Respondent was required to contact the agent for the Complainant by January 31, 2006, as required by their agreement. Failure to make contact would be a breach of the agreement between Domains By Proxy and would result in a cancellation of the agreement between them. Respondent did not make contact with Complainant within the prescribed time frame thus the Whois records for the domain were eventually changed back to those of the Respondent.
5. Parties’ Contentions
Complainant contends that the Domain Names are identical to its registered TUPPERWARE marks; that Respondent has not identified any rights or legitimate interests in the Domain Names; and that Respondent registered and is using the Domain Names in bad faith.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). In so far as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) 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
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established its rights in the TUPPERWARE mark through its longstanding use in the United States and its registrations on the Principal Register of the U.S. Patent and Trademark Office that date back to 1956.
The Domain Names <tupperwarebrands.com> and <tupperwarebrandscorporation.com> incorporate Complainant’s registered mark “TUPPERWARE” in its entirety. Where a domain name incorporates Complainant’s mark in its entirety, the domain name is deemed to be confusingly similar to that mark despite the addition of other words. See, e.g., Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (June 2, 2000) (holding that the domain name at issue <quixtarmortgage.com> is legally identical to Complainant’s mark QUIXTAR and that the addition of the generic terms “MORTGAGE” and “.com” have little, if any, affect on a determination of legal identity between the domain name and the mark). In this case, the addition of “brands” and “brands corporation” only exacerbate the confusion caused by the incorporation of the TUPPERWARE mark in the Domain Names because companies related to Complainant are known as “Tupperware Brands Corporation” or a likely shorthand “Tupperware Brands”. Moreover, the Domain Names are identical to Complainant’s domain names e.g., <tupperwarebrands.net>, <tupperwarebrands.org>, <tupperwarebrands.us>, <tupperwarebrandscorporation.net>, and <tupperwarebrandscorporation.org> but for the use of “.com” instead of “.net”, “.org” and “.us”.
The Panel therefore holds that Complainant has established element (i) above.
B. Rights or Legitimate Interests
It is undisputed that Complainant has not licensed or otherwise authorized Respondent to use the TUPPERWARE mark for any purpose. This suffices to make a prima facie showing for paragraph 4(a)(ii). See Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Paragraph 4(c) of the Policy sets forth three nonexclusive circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, demonstrate the Respondent’s rights or legitimate interests to the Domain Names. Respondent has provided no such evidence to rebut Complainant’s prima facie showing. For example, there is no evidence that Respondent was using or even preparing to use the Domain Names or a name corresponding to the Domain Names before any notice of the dispute in this case in connection with a bona fide offering of goods or services. Rather, Respondent registered the Domain Names <tupperwarebrands.com> and <tupperwarebrandscorporation.com> on December 5, 2005, the same day that Tupperware Corporation announced that it had changed its name to Tupperware Brands Corporation. Saab Automobile AB Saab Opel Sverige AB. v. Joakim Nordberg, WIPO Case No. D2000-1761 (March 1, 2001) (holding that “it does not in itself constitute a legitimate interest to register and use the trademarks belonging to someone else as a domain name”). Furthermore, Respondent is neither using the Domain Names in connection with a bona fide offering of goods or services (GoDaddy.com is parking the Domain Names for free), nor is Respondent making a legitimate noncommercial or fair use of the Domain Names without intent to misleadingly divert consumers (owing to the fact that Complainant is using the same Domain Names but for different gTLD’s, consumers are likely to be diverted).
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
These criteria are not exclusive and the Panel may conclude that the Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name. That is the case here.
Respondent registered the Domain Names in bad faith. As mentioned above, there is no evidence of record that Respondent was using or even preparing to use the Domain Names or a name corresponding to the Domain Names before any notice of the dispute in this case in connection with a bona fide offering of goods or services. The TUPPERWARE mark is a well-known mark and it is difficult to imagine that Respondent would not have been aware of the mark when she registered the Domain Names. Furthermore, the facts show that Respondent seized an opportunity on the day that the Tupperware Corporation changed its name from Tupperware Corporation to Tupperware Brands Corporation, to register two Domain Names that not only incorporate the new corporate name (Tupperware Brands) but also Complainant’s well-known registered trademark (TUPPERWARE). See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080 (November 15, 2000); See also Rona, Inc. v. Merry Christmas Everyone!, WIPO Case No. D2000-1653 (February 7, 2001).
Respondent has also been using the Domain Names in bad faith. “Parking” domain names, as Respondent did here, can constitute bad faith use of domain names. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (holding that “passive holding” of the domain name could constitute use of the domain name in bad faith). The Panel has already found that the TUPPERWARE mark that Respondent incorporated in the Domain Names is a well-known trademark for which Respondent does not have any rights or legitimate interests. Respondent has parked the Domain Names for free, courtesy of the Registrar, without using them and without submitting any evidence whatsoever of any good faith use of or intention to use the Domain Names. In response to Complainant’s repeated correspondence, among other things, requesting that Respondent transfer the Domain Names to Complainant, Respondent failed to respond let alone provide any evidence of her good faith use of the Domain Names. In fact, Respondent tried to conceal her identity through the use of Domains By Proxy. Even after having been provided additional time to respond to the Complaint, Respondent filed no response in defense of her conduct. Based on this evidence the Panel concludes that after registering the Domain Names in bad faith, Respondent continued to use them in bad faith.
The Panel therefore holds that Complainant has established element (iii) above.
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 names, <tupperwarebrands.com> and <tupperwarebrandscorporation.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: April 14, 2006