WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Candle Corporation of America v. Albert Rohrbach
Case No. D2006-0695
1. The Parties
The Complainant is Candle Corporation of America, Greenwich, Connecticut, United States of America, represented by Lauren J. Mandell, Esquire, Blyth, Inc., United States of America.
The Respondent is Albert Rohrbach, Plantation, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <colonial-candlehome.com> is registered with SRSplus.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 6, 2006, the Center transmitted by email to SRSplus a request for registrar verification in connection with the domain name) at issue. On June 7, 2006, SRSplus 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. On June 14, 2006, Complainant submitted revised contact information to the Center. On June 15, 2006, the Complainant’s revised contact information was forwarded to the Respondent. 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2006.
The Center appointed Andrew Mansfield as the sole panelist in this matter on August 3, 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 the owner of the mark COLONIAL AT HOME, protected by United States Patent and Trademark Office Registration No. 2,439,401. Complainant also submitted evidence that it is the owner of the COLONIAL AT HOME trademarks in Canada and in Mexico. The COLONIAL AT HOME trademark in all three nations is used as a designation on candles.
Complainant has filed applications with the United States Patent and Trademark Office for trademark registrations for the mark COLONIAL CANDLE (Serial Numbers 1258184, 78089584, and 78846495) on goods identified as candles, certain candleholders, and potpourri.
Complainant also owns the trademark COLONIAL in numerous countries throughout the world and has submitted evidence of worldwide registration of the COLONIAL trademark.
5. Parties’ Contentions
Complainant alleges that it has been selling fragranced candles under the COLONIAL CANDLE trademark since 1909. Complainant alleges that it began using the COLONIAL AT HOME trademark to designate its candle products in 1999. Current annual sales under the COLONIAL CANDLE and COLONIAL AT HOME trademarks total approximately US$40 million.
Complainant owns and operates commercial websites at “www.colonialcandle.com” and “www.colonialathome.com”. Complainant began promoting its goods at those websites in 1998 and 1999 respectively. In 2005, Complainant alleges that its websites were accessed over eight million times.
Complainant expends considerable sums promoting its products under the COLONIAL CANDLE and COLONIAL AT HOME trademarks. Complainant submitted nine examples of print advertising containing one or both marks.
Complainant alleges that the Domain Name <colonial-candlehome.com> is identical or confusingly similar to one or both of the trademarks COLONIAL CANDLE and/or COLONIAL AT HOME.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name <colonial-candlehome.com>.
Finally, Complainant alleges that Respondent registered and is using the disputed domain name <colonial-candlehome.com> in bad faith. Respondent provides links to third-party candle websites on the pages of the disputed domain name <colonial-candlehome.com>. Complainant alleges that Respondent benefits from consumer confusion resulting from the use of its trademark or trademarks in the Domain Name.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above with regard to each of the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The possession of U.S. Federally registered trademark rights by Complainant meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
In reviewing whether the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Panel is mindful of the fact that common words in the domain name should be eliminated for purposes of the comparison. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.), WIPO Case No. D2003-0696. In addition, generic terms occurring within a domain name in conjunction with a trademark should not be considered for purposes of comparison. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.
The relevant comparison to be made is with the second-level portion of the Domain Name only, as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
Although it appears that Complainant has common law trademark rights to COLONIAL CANDLE, Complainant did not allege sufficient facts for the Panel to determine conclusively that this is so. In addition, Complainant did not rely on common law trademark rights in the Complaint.
For that reason, the Panel need only examine the United States trademark registration number 2,439,401. As described above, that registration grants Complainant exclusive use of the trademark COLONIAL AT HOME in the United States concerning candle products. The generic term “candle” and the hyphen may be removed from the Domain Name for purposes of this comparison. The Panel is left comparing “colonial at home” in the registered trademark to “colonial home” in the Domain Name.
While not identical, the comparison of the registered trademark and the Domain Name reveals them to be confusingly similar. The Panel finds that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that it is aware of no rights or legitimate interests that Respondent has in the Domain Name. Complainant states that there is no relationship between Complainant and Respondent, that it has not granted Respondent any licence permission or other right to use a domain name incorporating Complainant’s trademarks. The disputed Domain Name is not the name of the Respondent. The Panel is satisfied that Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, respondents carry the burden of demonstrating rights or legitimate interests in the domain names. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be 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 or service on your website or location.”
The Panel finds that Respondent has sought to benefit from the confusion between the Domain Name and Complainant’s trademark. Respondent’s conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy.
The Panel finds that Internet users may arrive at the Domain Name in search of Complainant’s products or websites. Once there, the Panel notes that third-party paid search listings are displayed on the left and right side of the website. Respondent appears to commercially benefit when a confused Internet user then clicks on the displayed search links, each of which links to a candle or candle product website.
Further indicating bad faith registration and use, the text displayed on the pages of the Domain Name is nonsensical. While it consists of words and phrases related to candles, it appears randomly generated. The Panel notes that such text may increase the search engine placement of the Domain Name in search results for candles and Complainant’s trademarks. For example, one section of the text on the Domain Name reads:
Colonial Candle is related to Colonial-Candlehome.Com. The store transported a particular big collection of cookbooks on behalf of the mother who loves to cook - or else who simply loves cookbooks. Each candle is then wrapped within a particular shimmering Organza ribbon. Without our customers we wouldn’t be there, in addition to we never forget it. Gel candles are a particular fairly new type this are becoming more widely spread than you would even think.
Text taken from <http://colonial-candlehome.com/COLONIAL%20CANDLE.htm> on August 16, 2006.
Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
Dated: August 17, 2006