WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Columbia Insurance Company v. G Design
Case No. D2006-1617
1. The Parties
The Complainant is Columbia Insurance Company, of Omaha, Nebraska, United States of America, represented by Brinks Hofer Gilson & Lione United States of America.
The Respondent is G Design of Taiyuan, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <pamperedchef.org> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006. On December 21, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 21, 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 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 January 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Adam Samuel as the sole panelist in this matter on February 27, 2007. 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
Since 1990, the Complainant or its sister company The Pampered Chef Ltd has owned trademarks in the United States of America for the name The Pampered Chef for use in connection with kitchen utensils, household products and related goods and services. It owns a number of domain name registrations that incorporate in whole or in part the trademark, such as <pamperedchef.com>, <pampered-chef.net>. On December 17, 2003, the Respondent registered the domain name in issue.
5. Parties’ Contentions
The Complainant’s contentions are as follows: since 1980, it has continuously used the mark THE PAMPERED CHEF in connection with kitchen utensils, household products and related goods and services. It has spent millions of United States dollars promoting and advertising the mark and generated hundreds of millions of dollars in this way. It owns United States trademark registrations for marks comprising the words THE PAMPERED CHEF dated 1990, 1994, 2001, 2002 and 2003. It also owns trademark registrations in Canada, Germany and the United Kingdom for the same name. It owns a number of domain names incorporating the trademark.
In December 2003, the Respondent registered the domain name in issue to divert Internet users to its commercial website. Its website features links to third-party websites offering products that compete directly with those offered by the Complainant under the THE PAMPERED CHEF trademark.
The Panel should consider the inherent distinctiveness of the mark and the extent to which it has become known, the length of time that the mark has been in use, the nature of the service, business or trade with which the mark is being associated and the degree of resemblance between the mark and the domain name in appearance and sound or what is suggested by them.
The only difference between the domain name in issue and the THE PAMPERED CHEF trademark is the absence of the word “the”. This carries no significance and does not function to distinguish one mark from another. The elimination of the space between the words pampered and chef and the addition of the top-level domain are just technical features of Domain Name Naming System.
The Respondent does not own a trademark registration for any mark comprising, in whole or in part, the THE PAMPERED CHEF trademark. The Complainant has never authorized or licensed the Respondent to use the THE PAMPERED CHEF trademark or any confusingly similar variation of it.
The Respondent’s registration and use of the domain name in issue is not in connection with a bona fide offering of goods or services. It is aimed at diverting Internet users to its website through which it offers goods competing with the Complainants’ products.
The Respondent has not replied to a letter of December 14, 2006, requesting to the Respondent that it voluntarily transfers the domain name in issue to the Complainant. This in itself is evidence of bad faith.
The Complainant further submits that Respondent actual or constructive notice of the Complainant’s trademark rights by virtue of their United States registrations. By 2003, the trademark enjoyed such repute that the Respondent must have been aware of the Complainant’s rights when registering the domain name in issue. By then using the domain name to divert users to another site where they can buy products competing with the Complainants’ own goods, the Respondent is using the domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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
For the purposes of the first element of the Policy, the Complainant has to identify a trademark in which it has rights to which the domain name is at least confusingly similar. In the file, the Panel has a registration document issued by United States Patent and Trademark Office indicating that Trademark Registration 2,498,079 is in full force and has been registered for a term of 10 years from October 16, 2001. It goes on to indicate that title to the trademark is in the Complainant. The trademark is THE PAMPERED CHEF. It appears that ownership of the trademark has been transferred from the Complainant’s sister company, The Pampered Chef Ltd which appears as the registrant on all the other trademark registration documents on the file.
The domain name in issue includes the same words as the Complainant’s registered trademark THE PAMPERED CHEF, omitting the article “the”, adding the suffix “.org” and joining the second and third words together. The omission of the definitive article seems not to make any difference to whether the domain name in issue is confusingly similar to the trademark.
The Panel in The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112 took a similar view with respect to the domain name <bankofthepacific.com>:
“It is of no relevance that the Respondent does not deploy the definite article. For the current purposes the definite article can properly and safely be disregarded.
Thus the disputed domain name is […] confusingly similar to the Complainant's trademark THE BANK OF THE PACIFIC.”
Equally, it can be seen from this case that joining the words in a trademark together and adding “.org” to it does not make the domain name any less confusingly similar to the mark. This is of course a requirement of the Internet domain naming system. For all these reasons, the Panel conclude that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent does not have “pampered chef” in its name. It does not appear to trade under that name. There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the evidence before the Panel and in the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The uncontroverted evidence indicates that when the Respondent registered the domain name in issue in 2003, the Complainant’s trademark was so widely known, after 23 years of trading and 13 years of its first registration by the Complainant’s sister company, The Pampered Chef Ltd., that the Respondent in all likelihood knew of the Complainant’s or its sister company’s trademark rights. The Panel has no alternative explanation for the choice of the domain name in issue other than the reputation of the Complainant’s trademark in the area of kitchenware and similar products. The idea, again, as the uncontradicted evidence suggests, was to use this to attract Internet users to a website selling competing products. Knowingly breaching someone else’s trademark when registering a domain name is strong and here uncontroverted evidence of bad faith registration.
The Respondent is using the domain name in issue to divert Internet users to websites offering products that compete with the Complainant’s goods or to be more precise its sister company’s goods. It presumably does this in the hope of being commercially rewarded on a “pay-per-click-through” basis.
The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, concluded that this type of conduct constituted bad faith:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) ‘50% of all revenues generated from searches, popunders, popups, and exit popups’ in respect of users directed to its website through the participants domain name.
“This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if Internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of Internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
The Panel in Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649 reached the same conclusion in relation to a domain name that it concluded was confusingly similar to the Complainant’s THE PAMPERED CHEF trademark, saying:
“Complainant has established that Respondent has registered and used the domain name in bad faith by showing that Respondent uses the domain name to intentionally try to attract, for commercial gain, visitors to Respondent’s site, by creating a likelihood of confusion with Complainant’s THE PAMPERED CHEF mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the goods and services on Respondent’s site. See Policy, paragraph 4(b)(iv).
“As noted above, Respondent’s domain name is confusingly similar to the THE PAMPERED CHEF mark. It is therefore reasonable to conclude that Respondent’s site attracts visitors who are actually seeking Complainant’s site. Those visitors are then offered products that, according to Complainant, compete with those offered by Complainant. It is reasonable to assume that Respondent realizes a commercial gain from these activities.
“Moreover, it is relevant that Complainant’s registered mark has been in use for many years and is well known in connection with kitchen and household products. It is not unreasonable to impute to Respondent knowledge of Complainant’s rights in registering and using the domain name.
“Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that Respondent’s site does not make a bona fide offering of goods or services.
“Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.”
For all these reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in bad faith.
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 <pamperedchef.org> be transferred to the Complainant.
Dated: March 6, 2007